AAJ TAK JUDGMENT

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

1.         The dissemination of news and news reporting would be covered under Classes 38 and 41. It cannot, therefore, be said that the publishing of a newspaper by the Defendants is in a class of goods and services different from that for which Plaintiffs hold the trade mark registration. (Para 23)

2.         Even if Classes 38 and 41 are held not to cover newspapers, the publishing of newspapers is an allied and cognate activity similar to the goods and services for which the word mark 'Aaj Tak' has been registered in favour of the Plaintiffs. The adoption and use of such mark by the Defendants would undoubtedly cause confusion in the minds of the public and it is likely that the public will associate the activity of the Defendants with the Plaintiffs. Therefore, the ingredients of Section 29 (2) (b) of the TM act are also satisfied. (Para No.25).

3.        The PRB Act is concerned with registration for the purposes of publication. The PRB Act does not deal with various aspects of trade marks, the rights of a trade mark owner and remedies for infringement. (Para 31).

IN THE HIGH COURT OF DELHI AT NEW DELHI

CS (OS) No. 1085 of 2005

Reserved on: September 12, 2013

Decision on: October 7, 2013

T.V. TODAY NETWORK LTD. & ANR. ..... Plaintiffs

Through: Mr. Saurabh Srivastava with Ms. Shilpa Gupta, Advocates.

versus

KESARI SINGH GUJJAR & ORS. ..... Defendants Through: Mr. Y.D. Nagar, Advocate.

CORAM: JUSTICE S. MURALIDHAR

JUDGMENT

7.10.2013

1. This is a suit filed by TV Today Network Ltd. (Plaintiff No.1) and Living Media India Ltd. (Plaintiff No.2) against the Chief Editor and Editor (Defendants 1 and 2 respectively) of United Group of Media (Defendant No.3), Mr. Uttam Prakash (Defendant No.4), and M/s. Roshan Offset (Defendant No.5) for permanent injunction restraining the Defendants from passing off of their publications and for delivery up of all products of the Defendants and for rendition of accounts and damages.

2. After the filing of the suit in August 2005, the Plaintiff No.2 obtained registration for the trade mark 'Aaj Tak'. Accordingly, by an order dated 17th May 2006, the Plaintiffs were permitted to amend the plaint to seek the relief of permanent injunction restraining the Defendants from infringing the Plaintiffs' registered trade mark 'Aaj Tak'.

3. The Plaintiffs are companies having registered office in New Delhi. They state that Plaintiff No.2 is the publisher of several reputed news publications including 'India Today', 'Business Today', 'Computers Today' and 'Readers Digest'. From the year 1987, it has also been engaged in producing TV news programmes. In 1995, it decided to commence a news programme in Hindi under the name of 'Aaj Tak' and was granted registration for the said trade mark in classes 38 and 41. It also applied for registration of the trade mark in Classes 9 and 16 of the Schedule to the Trade Marks Rules. Plaintiff No.2 also acquired trademark registration in respect of the marks 'Subha Aaj Tak', 'Khel Aaj Tak' and 'Saptahik Aaj Tak' in Class 9. Copies of the trade marks registration certificates have been filed along with the plaint.

4. In 2000, Plaintiff No.2 launched a 24-hour news channel under the name 'Aaj Tak'. Plaintiff No.1 was established by Plaintiff No.2 as a new corporate entity for managing and administering the 'Aaj Tak' news channel. Plaintiff No.2 also licensed the use of the word, logo and trade mark/trade name 'Aaj Tak' to Plaintiff No.1. The Plaintiffs state that 'Aaj Tak' is a household name in India and several other countries where the TV signals of the 'Aaj Tak' channel are beamed. The trade mark/service mark 'Aaj Tak' has therefore been continuously and uninterruptedly used by the Plaintiffs since 1995. The Plaintiffs states that the news channel has won several awards and citations. It is stated that the trader mark/service mark 'Aaj Tak' is an arbitrary, unique combination/collection of two words in Hindi language thereby making the mark a highly distinctive one. Members of the public associate the mark only with the Plaintiffs. It is stated that Plaintiff No.1 has become the exclusive perpetual licensee of trade mark/logo 'Aaj Tak'. It is stated that 'Aaj Tak' is a well known trade mark within the meaning of Section 2(1) (zg) of the Trade Marks Act, 1999 ('TM Act'). The Plaintiffs state that trade mark/service mark 'Aaj Tak' enjoys tremendous goodwill and reputation on account of the high quality of programming. It is stated that as on the week commencing 30th April 2005, 'Aaj Tak' had a total viewership of 19.4 million at an all-India level pointing to a market share of 25.5%. The expenses incurred by the Plaintiff No.1 in promoting the mark for the years 2000-01 to 2004-05 have been set out in para 6. The turnover figures for the same period have been set out in Para 7. For the year 2004-05 the turnover was Rs.1390.68 lakhs.

5. In addition to the above the Plaintiff has also domain name 'www.aajtak.com' to provide news through the internet and on which website the said mark and logo are depicted. The Plaintiffs own other domain names: www.aajtak.in, www.aajtak.co.in, www.aajtak.firm.in, www.aajtak.gen.in, www.aajtak.org.in, www.aajtak.net.in, and www.aajtak.ind.in.

6. It is stated that in 2005, the Plaintiffs discovered that the Defendants were publishing a Hindi newspaper depicting under the same word mark 'Aaj Tak'. The Defendants had also registered an email address aajtakindia@rediffmail.com. The newspaper was a weekly being sold free in Delhi and Noida. The mark of the Defendants was phonetically, identically and visually similar to that of the Plaintiffs. It is stated that the Defendants used a style similar to that of the Plaintiffs in representing their mark in various advertisements. It is stated that the Defendants were misleading the public into believing that the Defendants were connected/affiliated to or licensed by the Plaintiffs to publish the impugned publications. Thus, the Defendants were illegally encashing on the reputation and goodwill of the Plaintiffs.

7. The Plaintiffs deputed an investigator to visit premises of the Defendants. A correspondent of the Defendants' newspaper informed the investigator that the newspaper 'Aaj Tak' is a weekly publication and also gave the investigator a rate list for booking advertisements in the newspaper. The visiting card of the correspondent and the rate list has been included in the documents filed with the plaint. It is stated by the Plaintiffs that the Defendants are deceiving the public into thinking that the Plaintiffs have started another newspaper under the name 'Aaj Tak'. The Defendants are also exploiting the goodwill and reputation of the mark by inviting advertisements to be placed in the newspaper. Further the Defendants are inviting applications from persons desirous of becoming 'Aaj Tak' models.

8. While directing summons to issue in the suit on 9th August 2005, the Court restrained the Defendants from making use of the mark 'Aaj Tak' or any deceptive variant thereof in respect of the Defendants' publications or in any manner till the order was modified, varied or vacated. That order has continued during the pendency of the suit.

9. In their written statement filed on behalf of all the Defendants, it is stated that the Defendants have been publishing the newspaper for ten years. The newspaper bears Registration No. 64796/96 having been registered in the office of the Registrar of Newspapers, under the Ministry of Information and Broadcasting. The copy of the certificate has been included in the documents filed with the written statement. It is next contended that the Plaintiffs were aware of the existence of newspaper since 1996 and, therefore, the suit was liable to be rejected both on the ground of latches and acquiescence. A reference is made to Section 33 of the TM Act. It is stated that newspapers fall in a different and distinct class of goods and service different from that in respect of which the trade mark registration is held by the Plaintiffs. The Defendants claim that it has an increasing number of members/subscribers since 1996. As on the date of filing the written statement, i.e. on 9th September 2005, there were around 5000 members/subscribers for the Defendants' newspaper. It is further stated that Defendant No.3 is a society registered under the Societies Registration Act, 1860 in accordance with its aims and objects and brought out the newspaper 'Aaj Tak' published in Hindi. The financial statement of Defendant No.3 for the years 2002 and 2004 has been enclosed. It is stated that newspaper is sold at a nominal rate of Rs.2 to cover the cost of publication and, therefore, is a social venture. It is denied that the Defendants are copying the trade mark of the Plaintiffs in any manner. It is denied that any investigator of the Plaintiffs visited the premises of the Defendants and met a correspondent of the Defendants' newspaper Mr. Manish Kumar or that he gave his visiting card or the rate list for advertisements. It is denied that 'Aaj Tak' is an arbitrary and unique mark. It is further submitted that the Defendants' newspaper is governed by the Press and Registration of Books Act ('PRB Act') whereas the Plaintiffs are running a TV channel. Therefore, the Defendants were exercising their legal rights to publish the newspaper. It is submitted that in common parlance, in respect of news, it is generally said: 'Kya Hai Aaj Tak Ki Kabhar' and from those words the words 'Aaj Tak' was appropriately used for the Defendants' newspaper in Hindi. The Defendants claim to have eminent subscribers and, therefore, no cause of action for a suit for infringement or passing off has arisen.

10. A replication was filed by the Plaintiffs on 9th November 2005 wherein, apart from reiterating the averments in the plaint, it is pointed out that PRB Act was for regulating newspapers and cannot override the TM Act, 1999 which is special enactment. As long as the Plaintiffs hold registration for the trade mark/service mark 'Aaj Tak' there was no provision in the PRB Act permitting the Defendants to infringe or pass off the Plaintiffs' registered trade mark.

11. By an order dated 8th February 2006, the Plaintiff was directed to file an affidavit to explain whether it had approached the Registrar of Newspapers for deregistration of the Defendants' publication. An affidavit was filed by the Plaintiffs on 17th February 2006 answering the said question in the negative. The Defendants were directed by the same order to disclose on affidavit as to what the circulation of the news paper was when it started and what its present circulation was. An affidavit dated 20th February 2006 was filed stating that the Registrar of Newspapers granted registration of Defendants' newspaper under the PRB Act after verification on 15th December 1995. It was stated in Para 4 of the said affidavit that the circulation of the Defendants publication had gone down. At the time of inception in 1996-97 the circulation of the Defendants' newspaper was 17,000 and in terms of the Annual Report of the Registrar of Newspapers for 2005 it had gone done to 2000. It is further claimed that immediately before the filing of the suit the circulation was 5,000 on account of "improvement in the newspaper such as size, colour, printing, and increase in number of pages, printing quality".

12. IA No. 7855 of 2005 was filed by the Defendants under Order XXXIX Rule 4 CPC for vacating the interim order of stay. Both IA No. 6052 of 2005 under Order XXXIX Rules 1 and 2 CPC and the aforementioned IA No. 7855 of 2005 were heard together. A detailed order was passed by the Court on 19th May 2008 affirming the injunction granted by the Court on 9th August 2005.

13. On 21st August 2008, the following issues were framed by the Court:

"(1) Does the Plaintiff prove entitlement to injunctive relief, as claimed, based on ownership of the registered trade mark 'Aaj Tak'? OPP

(2) Does the Plaintiff prove the Defendant's use of the mark or words 'Aaj Tak' amounts to infringement and/or passing off? OPP

(3) Does the Defendant prove its entitlement to use the word 'Aaj Tak' on the basis of registration under the registered Press and Registration of Books Act, 1867? OPD

(4) Is the Plaintiff entitled to damages and/or rendition of accounts, as claimed? OPP

(5) Relief."

14. On behalf of the Plaintiffs Mr. Ashok Kumar Vermani, their duly authorised signatory filed an affidavit dated 13th January 2009 of examination-in-chief. The board resolution authorizing him to act on behalf of the Plaintiffs was marked as Exhibit P-1. The trade mark registration certificates were marked as Exhibit P-2. The advertisements of the Plaintiffs' mark published in various newspapers in 1995 were marked Exhibit P-3. Documents pertaining to the goodwill and reputation of the Plaintiffs news channel 'Aaj Tak' were marked as Exhibit P-4. The visiting card of Mr. Manish Kumar, the correspondent of the Defendants whom the Plaintiffs' investigator met was marked as Exhibit P-5. The affidavit reiterated the averments in the plaint.

15. Further, for the Plaintiffs, an affidavit dated 8th December 2011of Ms. Divisha Bopana, the authorised signatory of Plaintiff No.2, was filed. The statement of Ms. Divisha Bopana as PW-1 was recorded on 21st May 2012. She was cross-examined on 23rd November 2012.

16. On 29th September 2008, the Defendants had filed a list of 15 witnesses. However, on 11th February 2013, a statement was made by learned counsel for the Defendants that the Defendants had no evidence to lead in the case. On the same date, Ms. Divisha Bopana was recalled for further cross-examination. She confirmed that the resolutions dated 17th March and 27th July 2005 do not show her name as the authorised representative of the Plaintiff No.2.

17. Mr. Saurabh Srivastava, learned counsel appearing for the Plaintiffs submitted that this was a case of infringement of the registered trade mark of the Plaintiffs and the Defendants contention that the PRB Act permitted the Defendants to publish their newspaper using an identical mark was no answer to the infringement in terms of the TM Act. He submitted that 'Aaj Tak' was an arbitrary and distinct mark and the Plaintiffs are the prior users thereof. He contended that the field and activity of Defendants viz., publishing newspapers was closely related to the principal activity of the Plaintiffs viz., news broadcasting, and that was causing a high degree of confusion in the minds of the public. According to him, there was a clear infringement of the registered mark of the plaintiffs in terms of Section 29 of the TM Act. Reliance was placed on the decisions in Playboy Enterprises v. Bharat Malik 2001 PTC 328 (Del), Century Traders v. Roshan Lal Duggar 15 DLT (1979) 269, Ziff-Davis Inc. v. Dr. D.K. Jain 1998 PTC (18), Novartis AG v. Wanbury Ltd. 2005 (31) PTC 75 (Del) and Bengal Waterproof Ltd. v. Bombay Waterproof Mfg. Co. 1997 PTC (17). He further pointed out that as the Defendants failed to avail of the opportunity of leading evidence the Plaintiffs' case was virtually uncontested. He relied upon the decisions inSwaran Singh v. State of Punjab (2003) 1 SCC 240 and Mohd. Naved v. Hindustan Petroleum Corporation 2004 (1) MPHT 16.

18. Mr. Srivasatava referred to Rule 22(2) of the Trade Marks Rules, 2002 ('TM Rules') which stated that the goods and services specified in the Fourth Schedule only provided a means by which the general content of the numbered international classes could be quickly identified and that reference had to be made to the alphabetical index of goods and services for determining the classification of particular goods and services. According to him, therefore, news report services were in Class 41 and television broadcasting and news agency under Class 38 as per the international classification of goods and services. According to him, by this classification, the Plaintiffs could be said to be holding registration for the above goods and services as well.

19. Appearing for the Defendants Mr. Y.D. Nagar, learned counsel, submitted that the Defendants had a right to publish their newspaper as part of their right to freedom of speech and expression. He placed reliance on the decision of the Karnataka High Court in Times Publishing House Limited v. Financial Times Limited 1995 (1) Kar LJ 219 and submitted that the PRB Act is a special law which not only provided for publishing and printing of newspapers but safeguarded the title of the newspaper. According to him, the registration of the Defendants' newspaper under the PRB Act was obtained much prior to the application made by the Plaintiffs for registration of the trade mark in relation to the news channel. He also placed reliance on the decision in Competition Review (P) Ltd. v. N.N. Ojha 1996 PTC (16) to submit that 'Aaj Tak' was a generic term and the Plaintiffs could not claim exclusive use to the said words. According to Mr. Nagar, it was unlikely that the subscriber to the Defendants' newspaper would be confused into thinking that it emanated from Plaintiffs. Reliance was placed on the decisions in Ram Kumar Jalan v. R.J. Wood & Co. Ltd. (28) AIR 1941 Lahore 262, J.K. Kapoor v. Micronix India 1994 Supp (3) SCC 215, Parry and Co. Ltd. v. Perry & Co. AIR 1963 Madras 460, SBL Ltd. v. Himalaya Drug Co. 1997 PTC (17) (DB), Rupee Gains Tele-Times Private Ltd. v. Rupee Times 1995 PTC (15) and Johnson and Johnson v. Christine Hoden India (P) Ltd. AIR 1988 Delhi 249. The thrust of the submissions of Mr. Nagar was that since the Plaintiffs held registration for their trade mark in a different class of goods and services and since in any event the Defendants hold valid registration for their newspaper under the PRB Act, no case for infringement could lie against the Defendants. He further submitted that the suit was barred by delay and acquiescence.

20. The Plaintiffs admittedly hold registration for the mark 'Aaj Tak'. Placed on record are the relevant trade mark registration certificates as Exhibit P-2 (collectively). Registration No. 1242921 has been granted in favour of Living Media India Limited for the word mark 'Aaj Tak' in Class 41.The registration has been issued on 7th October 2005. It has been indicated that the mark has been used since 1st June 1995. The Class 41 certificate describes the goods and services as "Education, Providing of Training, Entertainment, Sporting and Cultural Activities". Registration No. 1242922 has been issued on 23rd November 2005 in favour of Plaintiff No.2 for the word mark 'Aaj Tak' in Class 38 with use claimed since 30th June 1995. The Class 38 certificate describes the goods and services as "Telecommunication included in class 38".

21. Section 28(1) of the TM Act, 1999 states that the valid registration of a trade mark shall give to the registered proprietor "the exclusive right to the use of 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 by the Act". There is no doubt, therefore, that in the present case the Plaintiffs hold the valid registration of the trade mark 'Aaj Tak' in Classes 38 and 41. The certificates relate back to the date of making of the application. They also constitute prima facie evidence of the date from which the use is claimed. Significantly, in both these certificates the use has been claimed from 1st June and 30th June 1995 respectively which are prior to the dates on which the Defendants applied for registration of the newspaper using the same word mark 'Aaj Tak'.

22. Section 7(1) of the TM Act, 1995 states that the Registrar shall classify goods and services "as far as may be in accordance with International Classification of Goods and Services for the purposes of the registration of the trade marks". This has to be read with Rule 22 of the TM Rules which reads as under:

"22(1) For the purposes of the registration of trademarks, goods and services shall be classified in the manner specified in the Fourth Schedule.

(2) The goods and services specified in the Fourth Schedule only provide a means by which the general content of numbered international classes can be quickly identified. It corresponds to the major content of each class and are not intended to be exhaustive in accordance with the international classification of goods and services. For determining the classification of particular goods and services and for full disclosure of the content of international classification, the applicant may refer to the alphabetical index of goods and services, if any, published by the Registrar under Section 8 or the current edition of the international classification of goods and services for the purpose of registration of trade mark published by the World International Property Organisation or subsequent edition as may be published.

(3) The Registrar shall identify and include in the alphabetical index of classification of goods and services, as far as practicable, goods or services of Indian origin".

23. The Fourth Schedule to Rule 22 gives a detailed description of each of the classes of goods. For the purposes of the present case both Classes 38 and 41 fall under the sub-heading 'Services' in the Fourth Schedule to the TM Rules. Class 38 is "Telecommunications" and Class 41 is "Education; providing of training; entertainment; sporting and cultural activities". The International Classification of Goods and Services (Nice Classification) (9th Edition) issued in Geneva in 2006 gives the further sub-classifications of the broad classification of the goods. Under Class 38, sub-classification '380012' concerns "news agencies/wire services". Sub-classification '380005' concerns "television broadcasting". Under Class 41, the relevant sub- classifications are '4110103' "news reporters services", '410026' "production of radio and television programmes" and '410016' "publication of texts, other than publicity texts". It is, therefore, seen that the dissemination of news and news reporting would be covered under Classes 38 and 41. It cannot, therefore, be said that the publishing of a newspaper by the Defendants is in a class of goods and services different from that for which Plaintiffs hold the trade mark registration.

24. Turning to Section 29 (1) of the TM Act it is seen that infringement can result when a person not being a registered proprietor uses in the course of its trade a mark "which is identical with or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark." In the present case it is seen that the Defendants are using an identical trade mark i.e. 'Aaj Tak'. A perusal of the sample newspaper of the Defendants depicting the infringing mark shows that the word mark 'Aaj Tak' is identical to the registered word mark of the Plaintiffs. Further, the visiting card of Mr. Manish Kumar, correspondent of the Defendants' newspaper shows the words 'Aaj Tak' with the word 'Aaj' above the word 'Tak'. This is identical to the Plaintiffs' depiction of their mark. Even the depiction of the name of their newspaper in an advertisement in the newspaper inviting enquiries for placing advertisement depicts the mark in a manner identical to the depiction of the Plaintiffs' mark i.e. the word 'Aaj' shown above the word 'Tak'. It also shows the address of the Defendants.

25. Even if Classes 38 and 41 are held not to cover newspapers, the publishing of newspapers is an allied and cognate activity similar to the goods and services for which the word mark 'Aaj Tak' has been registered in favour of the Plaintiffs. The adoption and use of such mark by the Defendants would undoubtedly cause confusion in the minds of the public and it is likely that the public will associate the activity of the Defendants with the Plaintiffs. Therefore, the ingredients of Section 29 (2) (b) of the TM act are also satisfied.

26. Under Section 29 (4) of the TM Act, where the registered mark is shown to have a reputation in India and the use of the impugned mark by the Defendant results in taking unfair advantage of the registered mark or is detrimental to, the distinctive character or repute of such registered mark there is no need for the owner of the registered trade mark to demonstrate the likelihood of confusion in the mind of the public. As far as the present case is concerned, the uncontroverted evidence of the Plaintiffs clearly establishes that the Plaintiff No.2 is assignee and Plaintiff No.1 is the registered proprietor of the word mark 'Aaj Tak'. Secondly, the registrations are in respect of services under Classes 38 and 41 of the Fourth Schedule to the TM Rules. By virtue of Rule 22(2) of the TM Rules read with the Fourth Schedule these classes cover news reporting and dissemination of news as well. Thirdly, the Defendants are not the registered proprietor of the trade mark 'Aaj Tak'. The impugned mark 'Aaj Tak' adopted by the Defendants is identical to the registered mark 'Aaj Tak' phonetically, structurally and visually. The statements made on affidavits by the Plaintiffs regarding the reputation enjoyed by the registered mark in India and worldwide and the demonstrable exploitation of that mark by the Defendants by inviting applications for 'Aaj Tak Models 'and for advertisements by issuing tariff rates remains uncontroverted. It has been satisfactorily proved by the Plaintiffs that that the adoption and use of the impugned mark by the Defendants will cause detriment to the distinctive character and repute of the registered mark of the Plaintiffs. It is also been shown that the Defendants have by such use taken unfair advantage of the goodwill and reputation of the Plaintiffs' mark. There is nothing in the cross-examination of Plaintiffs' witnesses which disproves their case.

27. Significantly, the Defendants have not led any evidence whatsoever to counter the evidence of the Plaintiffs. As explained in A.Raghavamma v. A. Chenchamma AIR 1964 SC 136 and Mohd. Naved v. Hindustan Petroleum Corporation, the failure by the Defendants to examine themselves and to submit themselves to cross- examination as witnesses would result in discrediting the truth of their case.

28. To summarise, the Court is of the view that the Plaintiffs have been able to demonstrate that there has been an infringement of the Plaintiffs' registered trade mark in terms of Section 29(1) and 29 (2) (b) of the TM Act. Further by the material brought on record, the Plaintiffs have been able to demonstrate that the trade mark 'Aaj Tak' has a distinctive character and reputation in India and that the Defendants have sought to take unfair advantage of the reputation and goodwill of the Plaintiffs' mark and that such use is detrimental to the distinctive character and reputation of the registered trade mark thus attracting infringement in terms of Section 29(4) of the TM Act.

29.1 Since considerable reliance has been placed by learned counsel for the Defendants on the decision of the Division Bench of the Karnataka High Court in Times Publishing House Ltd., the Court proposes to discuss the said decision at some length. The facts in the said case were that the Plaintiff Financial Times Limited ('FTL') filed a suit in the civil court in Bangalore against Times Publishing House Ltd. ('TPHL') alleging infringement of its trade mark 'Financial Times' by TPHL. Admittedly, FTL held registration for the mark 'Financial Times'. An interim injunction was granted by the civil court restraining TPHL from printing and publishing 'The Financial Times'. TPHL was publishing 'The Economic Times' and offering 'The Financial Times' on a complementary basis along with 'The Economic Times' by printing it on a light pink paper which was similar to the colour of 'The Financial Times' as published by FTL. TPHL contended that it was registered under the PRB Act and that printing of newspaper was exclusively governed by PRB Act and, therefore, the Trade & Merchandise Marks Act, 1958 ('TMM Act') was not applicable. TPHL further contended that it was legitimately publishing 'The Financial Times' as a weekly newspaper after getting the necessary declaration from the RNI. The Division Bench of the Karnataka High Court relied upon the decision of this Court in M.K.Agarwal v. Union of India 53 (1994) DLT 751 where it was observed that the PRB Act being a special enactment prevailed when it comes to registration of newspapers and that when a conflict arose between the two enactments it could be resolved on the basis of well settled principles of interpretation of statutes.

29.2 The Karnataka High Court, which was considering the above question at the interlocutory stage, concluded that the PRB Act not only provided for printing and publishing newspapers but safeguarded the title of newspapers. Since TPHL had applied for, obtained registration of the title and thereafter used it, no malafides could be attributed to TPHL.

29.3 The second factor that weighed with the High Court was that there was a variation in the number of pages, news items, articles and the price of 'The Financial Times' published by FTL. Its circulation was only 231 copies and was available to selected members/contributories. It was held that without a PRB Act registration, there was no right to publish a newspaper in India. In those circumstances it was held that there was no possibility of deception since the readers were literate and could recognise the differences between two newspapers. More importantly, the PRB Act at the relevant time restricted publication of a newspaper by non- residents. In the circumstances, the hardship that would be caused to TPHL would be greater if the injunction was grated in favour of FTL. It was held that the trial court committed an error in holding that the TMM Act alone would govern the publication of newspapers.

30. The above decision is distinguishable on facts for more than one reason. In the first place it was a decision at the interlocutory stage of the matter and the fact that weighed to the Division Bench was that the newspaper published by FTL hardly had any circulation in India. Secondly, being a foreign entity it could not seek registration under the PRB Act. Thirdly, TPHL had a large circulation and was holding registration under the PRB Act and was in the business of publication of newspapers for long. Fourthly, as far as the present case is concerned, the Plaintiffs have been able to show that they have been in the business of disseminating news since 1995. The use claimed in both trade mark registration certificates is from June 1995. Admittedly, this is prior to the date on which the Defendants applied for and obtained registration of its title under the PRB Act. No parallel can therefore be drawn between the facts in the Times Publishing House Limited case and the instant case.

31. As explained in the decision of this Court in Playboy Enterprises, the PRB Act is concerned with registration for the purposes of publication. The PRB Act does not deal with various aspects of trade marks, the rights of a trade mark owner and remedies for infringement. The Times Publishing House Limited decision was rendered at a time when the TM Act had not been enacted. Under Section 7 of the TM Act read with Rule 22 and the Fourth Schedule of TM Act, it is clear that the classification of goods and services under the TM Act read with the TM Rules is of a wider nature. Further under Section 29 (4) of the TM Act there is an express protection afforded to well-known marks, and marks that are shown to have a reputation in India, even where they are in respect of goods and services different from those in respect of which the infringer has adopted and used an identical or similar mark. Therefore, even in law it is possible that the decision in the Times Publishing House Limited case may have been different had the above provisions existed at the time it was rendered. This Court is therefore of the view that the decision in the Times Publishing House Limited does not help the case of the Defendants.

32. Turning to the question of damages, the Court is of the view that in the circumstances of the case, the Plaintiffs are entitled to a decree for punitive damages against the Defendants. In Time Incorporated v. Lokesh Srivastava 2005 (30) PTC 3 (Del) the Court awarded the Plaintiff Rs. 5 lakhs as punitive damages after holding that "a large number of readers of the defendants' Magazine 'TIME ASIA SANSKARAN' also have suffered by purchasing the defendants' Magazines under an impression that the same are from the reputed publishing house of the plaintiff company."

The Court explained:

"the award of compensatory damages to a plaintiff is aimed at compensating him for the loss suffered by him whereas punitive damages are aimed at deterring a wrong doer and the like minded from indulging in such unlawful activities.... The punitive damages are founded on the philosophy of corrective justice and as such, in appropriate cases these must be awarded to give a signal to the wrong doers that law does not take a breach merely as a matter between rival parties but feels concerned about those also who are not party to the lis but suffer on account of the breach."

33. Consequently, the Court is of the view that in the instant case, the Defendants should be asked to pay the Plaintiffs punitive damages in the sum of Rs. 5 lakhs to act as a deterrent against the Defendants infringing the registered mark of the Plaintiffs.

34. The Court answers the issues framed as under:

Issue No.1: Does the Plaintiff prove entitlement to injunctive relief,as claimed, based on ownership of the registered trade mark 'Aaj Tak'?

The above issue is answered in the affirmative by holding that the Plaintiffs are entitled to a permanent injunction, as claimed, against the Defendants and their agents, employees and servants, jointly and severally, based on the Plaintiffs' ownership of the registered trade mark 'Aaj Tak'.

Issue No.2: Does the Plaintiff prove the Defendant's use of the mark or words 'Aaj Tak' amounts to infringement and/or passing off?

The above issue is answered in favour of the Plaintiffs and against the Defendants holding that the Defendants' use of the impugned mark and word mark 'Aaj Tak' amounts to infringement and/or passing off of the Plaintiffs' registered trade mark.

Issue No.3: Does the Defendant prove its entitlement to use the word 'Aaj Tak' on the basis of registration under the Press and Registration of Books Act, 1867?

The above issue is answered in the negative against the Defendants by holding that the Defendants have failed to prove their entitlement to the use of word mark 'Aaj Tak' on the basis of the registration under the PRB Act.

Issue No.4: Is the Plaintiff entitled to damages and/or rendition of accounts, as claimed?

The Plaintiff is entitled to punitive damages in the sum of Rs. 5 lakhs from the Defendants, jointly and severally. The Plaintiffs are also awarded costs of Rs.25,000 against the Defendants.

35. The suit is decreed in the above terms. Decree sheet be drawn up accordingly.

S. MURALIDHAR, J.

OCTOBER 7, 2013

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

 

 

TATA CASE

Comment: In this Case, the Hon’ble IPAB has returned the finding that proprietary right of trade mark holder extends even to different kind of goods.

Sandys Confezioni S.P.A. Versus Tata Engineering And Locomotive ... on 25 October, 2004

Equivalent citations: 2006 (32) PTC 296 IPAB

Bench: S Jagadeesan, R Singh

ORDER

S. Jagadeesan, Chairman

1. The appellants have filed this appeal against the order of the Deputy Registrar of Trade Marks, New Delhi dated 14.11.1986.

2. The appellants herein SANDYS CONFEZIONI S.P.A., an Italy based company, filed an application No. 360539 seeking the registration of the trademark letters 'S' 'T, which appears like a geometrical device in respect of 'articles of sport clothing'. The application was advertised in the Trade Marks Journal No. 775 dated 16.9.1981 at page

376. The first respondent herein M/s. TATA ENGINEERING & LOCOMOTIVE CO. LTD., on 2.11.1981, filed their notice of opposition protesting the registration of the impugned mark on the ground that they are the proprietors of various trademarks consisting of letter T' as its essential feature in respect of various goods under Nos. 279758, 297008, 299109, 300234, 345810, 345812, 345824 and 345828 and that their application for registration of T' trademarks in classes 6, 7, and 11 are pending and they are using the said trademark continuously for the past many years and the said trademark had come to be identified and associated exclusively with them. The letter T (hollow) in a circle with the words TATA ENGINEERING is the first respondent's house mark and the impugned mark is deceptively similar to that of the first respondent's mark. The registration of the impugned mark will be contrary to Sections 9, 11, 12(1), 18(1) and Rule 44(b) of the Trade and Merchandise Marks Act, 1958. The appellants herein filed their counter refuting the statements made by the first respondent and further stating that the appellants have their trademark 'ST' monogram and they have registered the same in several countries and they are using the same wherever it was registered and further they stated that the channels of trade and the class of purchasers for their goods are different from the channels and purchasers of the first respondent's goods. The first respondent filed evidence in support of opposition by way of an affidavit by Shri Ravindranath Dattatraya Kulkarni. Similarly the evidence of the appellants in support of their application is by way of an affidavit by Sergio Tacchini. The first respondent filed a reply again by way of another affidavit in the name of Shri Ravindranath Dattatraya Kulkarni and thereafter, the matter was heard by the Deputy Registrar. Before the Deputy Registrar of Trade Marks, the first respondent confined to the objections based on Rule 144(b) and Sections 9 and 11(a). After hearing the learned Counsel, the Deputy Registrar overruled the objection of the first respondent under Rule 144(b) as well as under Section 9. Even though the objection under Section 18(1) has been given up as per statement of the Deputy Registrar in the impugned order, he proceeded to discuss the same and ultimately found that the said objection also without any merit. The Deputy Registrar ultimately found that objection under Section 11(a) can be sustained and rejected the application of the appellants. As against the same, the appellants filed an appeal CM(M) 61/1987 on the file of Hon'ble High Court of Delhi, which was transferred to this Appellate Board by virtue of Section 100 of the Trade Marks Act, 1999.

3. We heard the learned Counsel Shri Sanjay Jain, on behalf of the appellants and Shri N.K. Anand, the learned Counsel for the first respondent. The learned Counsel for the appellants contented that the first respondent's mark "F is within a circle, whereas the appellant's mark consists of two letters 'S' and T'. The letter 'S' is written in a fashion with the letter 'T forms the impugned trademark. The impugned trademark is totally different from that of the appellant's mark and further the appellant's goods are also different, Section 11(a) of the Trade and Merchandise Marks Act, 1958, is not attracted. He also relied upon the Bombay High Court Judgment in Sony Kabushiki Kaisha v. Shamrao Maskar and Ors. and in National Sewing Thread Company Limited, Chidambaram v. James Chadwick and Brothers Limited and in Rustom Ali v. Bata Shoe Company , for the principle that when the goods or the description of the goods are different, there cannot be any confusion or deception and as such the trademark can be registered.

4. On the other hand, the learned Counsel for the first respondent contented that the first respondent's mark letter 'T' is their house mark. Hence, the same should be protected as their mark and they had been using the said mark for considerably a long period and all their goods including the Road Transport vehicles are recognised with the said trademark. He also contented that with this trademark, the first respondents are able to build up a very good reputation and goodwill. He further contended that both the marks are identical and as such, the impugned mark, even though relates to different goods, cannot be registered in view of the judgment of the Delhi High Court in Daimler Benz Aktiegesellschaft and Anr. v. Hybo Hindustan 1994 (14) PTC 287 (Del).

5. We have carefully considered the above contentions of both the counsels. The Deputy Registrar has found that though the goods are different but still there can be some probability of confusion or deception in the minds of the public because of the similarity of the two marks. In fact, to see the similarity of both the marks, we are placing the marks side by side hereunder."

Appellant's Mark First Respondent's Mark

The appellant's mark though consisting of two letters 'S' and T, for a look one has to strain too much to identify the letter 'S', For a bare look, it looks as if 'T' is within a circle as that of the first respondent's mark. The small gap on either side of the appellant's mark is not so prominently visible. One should not strain to differentiate or distinguish the trademark. Obviously, this principle is to help the individual to identify the trademark in respect of the goods easily in order to distinguish the proprietors and their goods. We are of the view that both the marks are almost similar and there is not much difference to make the appellant's mark a distinctive one from that of the first respondent's house mark. On this ground itself, the application of the first respondent is liable to be rejected, as the registration would be in violation of Section 11(a) of the said Act.

6. Even apart from this, the main contention of the learned Counsel for the appellant is that the trading channel and their goods being different from that of the first respondent, appellant's mark can be registered as there is no possibility of any confusion. Admittedly, the appellant has no sales in India. They have registered their mark in various countries. The appellants have not let in any evidence to establish that they have acquired any trade reputation or goodwill in India. They want to register the impugned mark as proposed user and when they want to have the trademark afresh, they can adopt a non-offending trademark. The first respondent is a well reputed concern dealing in automobiles and also several other goods such as automobile spare parts, excavators, machine tools, industrial shutters and fork lifts, industrial tractors, etc. The first respondent having established their goodwill and reputation all over India naturally are entitled to have their trademark safeguarded and protected. If the impugned mark is registered as the sports-wear mark, it may lead to the public that the sports-wear of the appellant are from the factory of the first respondent and this will lead to confusion and deception in the minds of the public as to the proprietor of the goods. We do not want to elaborate the principle except to refer the familiarly known 'Benz Case' (AIR 1994 Delhi) in Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan 1994 (14) PTC 287 (Del), wherein the learned single Judge held that the name 'Benz' as applied to a car has a unique place in the world and there is hardly one who is conscious of existence of the car/automobiles, who would not recognise the name 'Benz' used in connection with cars. Thus, the name 'Benz' used for the under-garments cannot be permitted. In fact the said judgment was confirmed by the Supreme Court also. Though it is by way of an interim order, in a case of infringement, the principles laid down by the learned Judge can be taken as guidelines to decide the cases of registration also at times. The Hon'ble High Court of Delhi in yet another case Honda Motors Company Ltd. v. Charanjit Singh and Ors. 2003 PTC 408 similarly held that the name Honda, which has the distinctiveness, quality and goodwill of plaintiff in respect of their car cannot be permitted to use by the defendants in respect of their goods namely, pressure cooker. Following the above principles, we are of the view that the Deputy Registrar of Trade Marks had rightly rejected the application of the appellant for registration of the impugned mark. Accordingly, we confirm the same. Consequently, the appeal is dismissed. No costs.