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2024 DIGILAW 1593 (GUJ)

Vikas Oil Industries v. Mangrol Oil Mill

2024-07-22

PRANAV TRIVEDI, SUNITA AGARWAL

body2024
JUDGMENT : (Sunita Agarwal, CJ.) : 1. The instant appeal under Order 43 Rule 1 (r) of the Code of Civil Procedure, 1908 read with Section 13 of the Commercial Courts Act, 2015 has been preferred against the judgment and order dated 11.08.2023 passed by the Additional District Judge, Commercial Court Judge, Morbi on an interim injunction application Exhibit 5 in a suit for infringement of the trade mark and passing off as also for rendition of accounts and damages. The relief claimed in the suit are for perpetual injunction restraining the defendants through their proprietor, partners, servants, agents, etc. all persons associated or connected with the business of the defendants from adopting and/or using the impugned marks “Rose” and/ or “Rose”/ “Gulab” in any manner or from adopting or using any marks identically or deceptively similar to the registered trade mark “Gulab”, which is a prior used trade mark of the plaintiffs in respect of business of their groundnut oils, edible oils and cooking oils of whatsoever nature. On the plea of commission of the acts of passing off by the defendants, permanent injunction has been sought. 2. During the pendency of the suit, Exhibit 5 interim injunction application has been preferred praying for restraining the defendants from using the trade mark, identically and deceptively similar to the registered trade mark of the plaintiffs “Rose” with device, which was alleged to be deceptively similar to the plaintiffs’ mark “Gulab” with device. 3. The Trial Court referring to the provisions contained in Section 29 of the Trade Marks Act, the Legal Use Certificate issued by the Trade Mark Registry brought on record by the Plaintiffs, has recorded an opinion that the mark of the plaintiffs are registered in all the respective Classes, i.e. Classes 29 and 31 since 13.09.1988 as well as different years, months and dates and their registration is valid till date. The user date of the mark “Gulab” with device of the plaintiffs is claimed from 1985. As per Section 31 of the Trade Marks Act, 1999, registration is prima facie evidence of its validity. The plaintiffs are, thus, proved to be registered user and proprietor of the mark “Gulab” with device under Classes 29 and 31. The protection under the Trade Marks Act under Sections 28 and 29 are, thus, available to the plaintiffs. As per Section 31 of the Trade Marks Act, 1999, registration is prima facie evidence of its validity. The plaintiffs are, thus, proved to be registered user and proprietor of the mark “Gulab” with device under Classes 29 and 31. The protection under the Trade Marks Act under Sections 28 and 29 are, thus, available to the plaintiffs. There is an exhaustive discussion on the meaning of two phrases “identical” or “deceptively similar” and the primary test is as to how it would be decided as to whether the impugned trade mark is identical or similar to the registered trade mark. Further, on comparison of the impugned trade mark with the registered trade mark of the plaintiffs, it was opined that the impugned trade mark of the defendants is a replica/ditto imitation of the plaintiffs’ trade mark. 4. It was further observed that the defendants have made no attempt to coin their mark and they have picked up the mark of the plaintiffs and, thereafter, by making minor changes, adopted the mark of the plaintiffs as a whole. It was further pointed out that the mark of the defendants was conceptually, structurally and phonetically identical with plaintiffs’ mark “Gulab” and all prominent features of the plaintiffs’ mark are included and expressed in the defendants’ mark. Minor similarities in the mark of the defendants are trivial and it cannot be said to be distinct, structurally, conceptually or visually. After arriving at the conclusion that the impugned mark “Rose” with the device of the defendants is identical and deceptively similar to the plaintiffs’ mark “Gulab” with device. The Trial Court has proceeded to examine as to whether the goods and services in relation to which the defendants use the mark are identical or similar to the goods or services in relation to which the plaintiffs use its registered trade mark. It was opined that the plaintiffs got a Legal Use Certificate of the registered trade mark under Classes 29 and 31, which shows that the mark is used in relation to goods, viz. edible oils including groundnut oil, cottonseed oil, soyabean oil, palmolien oil and agriculture products such as Food Grains, Ground Nut Seeds, Cattle Feed etc. From the product brochure of the defendants produced by the plaintiffs, it was opined that the product of both the plaintiffs and the defendants is one and the same, i.e. groundnut oil. edible oils including groundnut oil, cottonseed oil, soyabean oil, palmolien oil and agriculture products such as Food Grains, Ground Nut Seeds, Cattle Feed etc. From the product brochure of the defendants produced by the plaintiffs, it was opined that the product of both the plaintiffs and the defendants is one and the same, i.e. groundnut oil. Admittedly, the defendants are also doing the business of groundnut oil and preferred an application before the Trade Mark Registry in the year 2008 to seek registration of the goods falling under Class 29. It was, thus, concluded that the production of the groundnut oil of the plaintiffs and the defendants are one and the same. With these findings, the Trial Court has proceeded to draw a presumption under Section 29(2)(c) of the Act as also the perception of the consumers/customers who are going to use the goods of the defendants and the plaintiffs. It was, thus, held that the impugned mark of the defendants is likely to cause confusion in the mind of the public and is also likely to cause its association with the plaintiffs’ mark. 5. There is a reference of the plea of the defendants in the order impugned that the defendants are concurrently, honestly and lawfully uninterruptedly using the trade mark “Rose” since the year 1991 and the plaintiffs for the first time have raised an objection by filing the suit for infringement in the year 2022. However, the said argument was brushed aside with the only observation that the plaintiffs had filed opposition against the registration of rose device as trade mark of the defendants and the defendants have not been successful in registration of the “Rose” trade mark in their favour. The application seeking registration of the trade mark “Rose” with device was filed by the defendants much later and the plaintiffs had instituted a suit within two months of filing objection before the Registry Office. The plea of the defendants that there was a delay on the part of the plaintiffs regarding filing objection before the competent authority was, thus, turned down, with the observation that wrong doer cannot gain benefit of his own. 6. The Trial Court has further proceeded to refer to the judgment of the Apex Court in Midas Hygiene Industries Pvt. Ltd. V/s. Sudhir Bhatia & Ors. 6. The Trial Court has further proceeded to refer to the judgment of the Apex Court in Midas Hygiene Industries Pvt. Ltd. V/s. Sudhir Bhatia & Ors. [ (2004) 3 SCC 90 ] to observe that in a case of infringement either of trade mark or of copy right, normally injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. Injunction becomes all the more necessary when adoption of mark itself was dishonest. With respect to the arguments of the defendants that the defendants are using the mark since 1991, it was observed that the defendants have to clearly establish their prior use. The Registry of the Trade Mark had issued Registration Certificate of the registered trade mark “Gulab” to the plaintiffs on 13.11.1988 and the defendants though claim of doing business since the year 1991, had applied before the Trade Mark Registry in the year 2008. The provisions of Section 34 of the Trade Mark Act, therefore, cannot come to the rescue of the defendants. With these observations and findings, the Trial Court has rejected all contentions of the defendants to come to the conclusion that the plaintiffs have been able to establish a prima facie case of infringement and passing off in their favour. Once infringement is prima facie established, then automatically the balance of convenience and irreparable injury will follow in favour of the plaintiffs. 7. Challenging these findings, learned counsel for the appellant would submit that the appellant-orig. defendant no.1 has been using the trade mark “Rose” along with device rose since 1991 continuously, openly and uninterruptedly in Wankaner and Morbi in the State of Gujarat. A trade mark application before the Trade Mark Registry had been filed on 21.12.1999, whereupon the respondent no.1-plaintiff had filed opposition on 30.01.2008. It is submitted that the respondents-plaintiffs have created a fake cause of action for filing a commercial suit on 20.10.2022. It is a case of latches and acquiescence on the part of the plaintiffs who were well aware of the trade mark of the defendants at least on 30.01.2008 when opposition application has been filed in the Trade Mark Registry. It is submitted that the respondents-plaintiffs have created a fake cause of action for filing a commercial suit on 20.10.2022. It is a case of latches and acquiescence on the part of the plaintiffs who were well aware of the trade mark of the defendants at least on 30.01.2008 when opposition application has been filed in the Trade Mark Registry. The appellant-defendant no.1 had also produced its user documents from the year 1996 and the facts with regard to filing of the trade mark application by the defendants for the mark “Rose” on 21.12.1999 and the opposition filed by the respondents-plaintiffs on 03.01.2008, are not in dispute. It is, thus, contended that the respondents-plaintiffs were well aware of the usage of mark “Rose” by the defendants and the suit for infringement is liable to be rejected being barred by gross latches and principles of acquiescence. It is a case of material suppression of facts by the plaintiffs while creating a fake cause of action. 8. The second ground of submission of the learned counsel for the appellant-defendant no.1 is that the respondents-original plaintiffs are non-user of the trade mark “Gulab” though it has claimed registration of the device mark being Application No. 497696, which is not in use till date. The said fact is admitted by the respondents-original plaintiffs in the plaint itself. Attention of the Court is invited to pages 30-40 of the paper book, to place the averments in the plaint, to contend that the statements therein are clear proof of admission of the respondents being non-user of the trade mark “Gulab” with the device, which is stated to be identical and deceptively similar to that of the defendants’ trade mark. It is further submitted that the well settled principle of law is that the applicants of the trade mark does not have a permanent right by virtue of its registration alone. The registration under the statute does not confer any new right to the mark claimed or any greater right than what already exist at common law and at equity without registration. The registration under the statute does not confer any new right to the mark claimed or any greater right than what already exist at common law and at equity without registration. The Trial Court has wrongly compared the mark of the plaintiffs with that of the defendants by applying the provisions of Sections 28 and 29 of the Trade Mark Act, when it was a specific case of the defendants that the plaintiffs are not using the trade mark, which is stated to have been adopted by the defendants with dishonest intention. It was vehemently urged by the learned counsel for the appellant-original defendant no.1 that the plea of the appellant that the respondents-original plaintiffs though obtained registration of the device with word “Gulab” as trade mark, but has never used the same since last so many years. Being a non-user of the trade mark in question, mere registration of the said device does not give any right to the plaintiffs to seek injunction on the plea of infringement or passing off. 9. The plaintiffs have also suppressed the material facts while filing a suit that a third party had filed Civil Suit for infringement and passing off action of trade mark “Gulab” against the plaintiffs before the High Court of Delhi in the year 2020 and the plaintiffs have been restrained from using the trade mark “Gulab” under the order passed by the Division Bench of the Delhi High Court. Before the Delhi High Court, the respondents-original plaintiffs have taken a defence that the word “Gulab” is a generic term and there are many other users of the mark “Gulab”. 10. A categorical statement has been made in the written statement which has been placed before us at page 646', to the effect that in the pleadings, the plaintiffs are completely silent about the use of the device mark by it. There is no iota of evidence that the plaintiffs are using the device of rose as alleged in any of its trade mark in use. It is further categorically averred that the plaintiffs are non-users of the device mark as per the Trade Mark Application No.497696 in Class 29 and in fact the online website of the plaintiffs show few device marks used by them, which are different from that of the impugned mark of the defendants. It is further categorically averred that the plaintiffs are non-users of the device mark as per the Trade Mark Application No.497696 in Class 29 and in fact the online website of the plaintiffs show few device marks used by them, which are different from that of the impugned mark of the defendants. The written statement itself contains details of those device marks used by the plaintiffs for its product at pages 646-648' of the paper book. It was, thus, submitted by the learned counsel for the appellant-defendant no.1 that the respondents-original plaintiffs themselves have discontinued the registered trade mark “Gulab” with device rose and, in fact, they have never used the said trade mark, whereas the defendant is in the market since the year 1991. By mere fact of registration without use of the trade mark, the plaintiffs are not entitled to seek protection under Sections 28 and 29 of the Trade Mark Act, 1999. 11. On the plea of acquiescence, it was submitted that the plaintiffs were well aware of the trade mark of the defendants at least on 30.01.2008 when opposition has been filed before the Trade Mark Registrar on the pending application of the defendants dated 21.12.1999 seeking registration of the impugned trade mark. It was submitted that goods were sold in the market after 2008. Categorical averments have been made with regard to the sales invoices in the Written Statement. The Sales Invoices after 2008 are also produced as documentary evidence. However, the suit has been filed on 20.10.2022 by concealment of the material fact and that the plaintiffs have kept silence for almost 12 years. Reliance is placed on the following decisions of the Apex Court, the Gujarat High Court and the Delhi High Court on the plea of latches, delay and acquiescence :- (i) Wander Ltd. and Ors. Vs. Antox India Pvt. Ltd [1990 SCC (SUPP) 727] (ii) Mandali Ranganna and Ors. Vs. T. Ramachandra and Ors. [ 2008 (11) SCC 1 ] (iii) Brihan Karan Sugar Syndicate Private Ltd vs. Yashwantroa Mohite Krushna Sahakari Sakhar Karkhana [ (2024) 2 SCC 577 ] (iv) Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Ltd [ (2018) 1 SCC 1 ] (v) Apple Silk Mills Pvt. Ltd. Vs. Apple Sarees Pvt. Ltd. [decision dated 30.03.2017 in Appeal from Order No. 89 of 2017 of High Court of Gujarat] (vi) Samrat Namkeen Private Ltd. Vs. Prius Auto Industries Ltd [ (2018) 1 SCC 1 ] (v) Apple Silk Mills Pvt. Ltd. Vs. Apple Sarees Pvt. Ltd. [decision dated 30.03.2017 in Appeal from Order No. 89 of 2017 of High Court of Gujarat] (vi) Samrat Namkeen Private Ltd. Vs. Parakh Agro Industries Ltd. [decision dated 30.06.2015 in Appeal from Order No. 30 of 2012 of High Court of Gujarat] (vii) Matrix Telecom Pvt. Ltd. vs. Matrix Cellular Services Pvt. Ltd. [decision dated 10.03.2011 in Appeal from Order No.6 of 2010 of High Court of Gujarat] (viii) Cadila Health Care Ltd. vs. Biochem Pharmaceutical Industries [decision dated 20.072011 in Appeal from Order No. 251 of 2008 of High Court of Gujarat] (ix) Apollo Parker Construction Equipments Pvt. Ltd. vs. Ammann India Private Ltd. [decision dated 16.12.2022 in Appeal From Order No. 43 of 2022 of the High Court of Gujarat] (x) The Trustees of Princeton University vs. The Vagdevi Educational Society & Ors [decision dated 06.09.2023 in CS (COMM) 270 of 2022 of the High Court of Delhi] (xi) Sun Pharma Laboratories Ltd. vs. Finecure Pharmaceuticals Ltd. [decision dated 16.08.2023 in CS (COMM) 283 of 2023 of the High Court of Delhi] (xii) MEX Switchgears Pvt. Ltd. Vs. Omex Cables Industries and Ors. [decision dated 17.07.2017 in CS (OS) 2247 of 2015 of the High Court of Delhi]. 12. Reliance is placed on the decision of the Apex Court and the High Courts on the plea of non-user of the trade mark :- (i) Neon Laboratories Ltd. Vs. Medical Technologies Ltd. [ 2016 (2) SCC 672 ] (ii) S. Syed Mohideen vs. P. Sulochana Bai [ (2016) 2 SCC 683 ] (iii) Alka Gupta vs. Narendra Kumar Gupta [ 2010 (10) SCC 141 ] (iv) Premlata @ Sunita vs. Naseeb Bee [ (2022) 6 SCC 585 ] (v) Blinkhit Private Limited vs. Blink Commerce Private Ltd. [Special Leave to Appeal (C) No. 14547/2023 dated 04.08.2023] (vi) Blinkhit Private Limited vs. Blink Commerce Private Ltd. [2023 SCC OnLine Kar 22 – Karnataka High Court] (vii) Raman Kwatra vs. M/s. Kei Industries Ltd. [decision dated 06.01.2023 in FOA(OS) (Comm) 172/22) of the High Court of Delhi] (viii) Karam Multipack Pvt. Ltd. vs. Karamgreen Bags [decision dated 21.03.2024 in Appeal from Order No. 136 of 2023 of the High Court of Gujarat]. 13. 13. The submission, thus, is that the Trial Court has completely ignored these two relevant aspects of the matter and digressed itself in rejecting the legal pleas of the defendants while deciding the injunction application. 14. Mr. Saurabh Soparkar, learned Senior Advocate appearing for the respondents-original plaintiffs, however, referring to the findings of the Trial Court has laid much emphasis on the identity and deceptive similarity of the two trade marks, the registered trade mark of the plaintiffs and the impugned trade mark being used by the defendants. From the decisions in Power Control Appliance vs. Sumeet Machines Private Ltd. [( 1994 (2) SCC 448 ] and Rupa and Company vs. Dawn Mills Co. Ltd. [ (1999) 1 GLR 744 ], it was argued that in an infringement action on the trade mark, an injunction is to be granted as soon as it is proved that the defendants are improperly using the plaintiffs’ trade mark. Much emphasis has been laid to the observations in the case of Midas Hygiene Industries Pvt. Ltd. (supra) to submit that the law on the subject is well settled that in cases of infringement of trade mark, normally, injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the trade mark was itself dishonest. It was argued that it has been held therein specifically that delay and latches in filing the suit will not disentitle the plaintiffs to seek injunction when it is established that the defendants have acted dishonestly in the adoption of the offending trade mark. 15. Reliance is placed on the decision of the Bombay High Court in Schering Corporation and Ors. Vs. Kilitch Co. (Pharma) Pvt. Ltd. dated 13.03.1990 in OOCJ Appeal No. 264 of 1990 to submit that the defendants ran the risk of using a mark, which belonged to the plaintiff and has continued its business uninterruptedly for number of years before any action was taken by the plaintiff against it. The continued user cannot be set up as a defence and a plea of inordinate delay in filing the suit was hence rejected. The continued user cannot be set up as a defence and a plea of inordinate delay in filing the suit was hence rejected. Further reliance is placed on the decision of the Bombay High Court in Emcure Pharmaceuticals Ltd. vs. Corona Remedies Pvt. Ltd. [ 2014 (60) PTC 332 (Bom)], to argue that once it is established that the plaintiff is a prior user of the trade mark with its registration in the year 1988, the question of delay and acquiescence would not be relevant, inasmuch as, mere delay will not defeat the rights of a registered proprietor. 16. The judgement of the Apex Court in Power Control Appliances (supra), has been placed before us to submit that it has been held therein that it is settled principle of law relating to trade mark that there can be only one trade mark, one source and one proprietor where the defendants have proclaimed themselves as a rival of the plaintiffs. Reliance is placed on the decision of the Apex Court in Wander Ltd. (supra) to argue on the scope of jurisdiction of this Court in an appeal against the order of interim injunction under Order 43 Rule 1 (r) CPC to submit that the question of reversal by a Court of Appeal of an order made by a trial judge, is to arise only when it is established that the Court of first instance has exercised its jurisdiction in granting injunction arbitrarily or capriciously or perversely or in ignorance of the settled principle of law regulating grant or rejection of the interlocutory injunctions. It was submitted that in such appeals, the Appellate Court will not interfere with the exercise of discretion of the Court of first instance and substitute its own discretion except where the aforesaid situation is found and proved. The Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the trial court, if the one reached by that court was reasonably possible on the material. 17. The Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the trial court, if the one reached by that court was reasonably possible on the material. 17. Having considered the submissions of the learned counsels for the parties and perused the record, we may note that there are undisputed facts to the effect that the plaintiffs though are having registration of the trade mark “Gulab” with device rose since the year 1988, but the specific case of the defendants is that the plaintiffs have never used the trade mark got registered by them as a device mark as per Trade Mark Application No.497676 in Class 29. The specific claim of the defendants is that the plaintiffs are non-user of the said device mark. The categorical statement of the defendants in the written statement about the plaintiffs being non-user of the trade mark and stated to be agitated before the trial court has been completely ignored. This fact itself shows perversity in the order passed in the interim injunction application by the trial court more so in view of the fact that it is established by the defendant that the defendant had filed an application before the Trade Mark Registry on 21.12.1999 for registration of the device mark with word “Rose” and the device rose. On the said application, the plaintiffs had filed objection on 30.01.2008, but for the reasons best known to them, the plaintiffs have kept mum. The suit has been filed on 20.10.2022, after 15 years since filing of the objection by the plaintiffs. The statement in the plaint about the cause of action that the plaintiffs came to know about the trade mark of the defendants in the month of September and the cause of action had arisen against the defendants in the first week of September 2022, when the plaintiffs came to know about the defendants’ fraudulent acts in the market, requires inquiry. 18. The learned advocate appearing for the defendants had taken us to the evidence led before the Trial Court to establish that the defendants have been using the trade mark “Rose” at least from the year 1996. 18. The learned advocate appearing for the defendants had taken us to the evidence led before the Trial Court to establish that the defendants have been using the trade mark “Rose” at least from the year 1996. The categorical submission of the defendants that the fact of usage of the trade mark “rose” with device by the defendants was very much in the knowledge of the plaintiffs and the plaintiffs have not brought any action for the reason that they were not using the registered trade mark “Gulab” with device rose for long time, require examination which the trial court has not done in the instant case. The Trial Court has turned a blind eye to the two contentions of the defendants that the plaintiffs are nonusers of the device trade mark with Gulab and device of rose and mere registration of the said device trade mark would not confer any right to seek protection. 19. The plea of delay and acquiescence made on the part of the defendants has been sidelined. As noted hereinbefore, the Trial Court has simply proceeded to compare the two trade marks to reach at the conclusion that they were identical and deceptively similar to further note that the defendants were using the impugned trade mark for the same business of groundnut oil as that of the plaintiffs and that the defendants have been dishonest in using the plaintiffs trade mark to arrive at the conclusion of proof of infringement of the registered trade mark of the plaintiffs ignoring the material plea of the plaintiffs being the non-user of the trade mark and acquiescence on the part of the plaintiffs in not brining any action for a period of 15 years. The submission of the defendants that the conduct of the plaintiffs disentitles it to seek an interim injunction in the pending suit for infringement has been ignored. 20. For the aforesaid, we find that the judgment and order dated 11.08.2023 passed below Exhibit 5 by the learned Additional District Judge & Commercial Court Judge, Morbi in Commercial Trademark Civil Suit No. 1 of 2022 suffers from perversity, arbitrariness and passed in ignorance of the settled principles of law relating to grant or refusal of injunction in a Trade Mark Suit. 21. The order being capricious in nature, is liable to be set aside. 21. The order being capricious in nature, is liable to be set aside. With the above, while setting aside the judgment and order dated 11.08.2023 passed by the Trial Court, the matter is remitted back for fresh decision on the interim injunction application taking into consideration all the rival pleas of the parties to the suit, considering all points of objections of the defendants raised in the injunction application. A reasoned and speaking order strictly in accordance with law without being influenced by any of the observations made hereinabove shall be passed by the Trial Court, as expeditiously as possible, preferably within a period of one month from the date of receipt of the copy of this order. 22. Both the parties are hereby mandated to cooperate in the early disposal of the interim injunction application and in case of any reluctance or avoidance on the part of any of the parties, it would be open for the Trial Court to proceed ex parte in accordance with law. 23. Subject to the above, the instant petition is disposed of. No order as to costs. Civil Application stands disposed of in view of the disposal of the appeal itself.