G.Jayachandran, J. C.S. No.799 of 2014. D/d. 10.03.2020.trade mark case order For the Plaintiff : Mr.AR.L. Sundaresan, Senior Counsel, for Mr.G.K.Muthukumar, Advocate. For the Defendant : Mr.K.Rajasekaran, Advocate. Case dismissed.
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M/s. LION Dates Impex Pvt Ltd. v. P.Mohammed Ibrahim, (Madras) : Law Finder Doc Id # 1712677
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MADRAS HIGH COURT
Before :- G.Jayachandran, J.
C.S. No.799 of 2014. D/d. 10.03.2020.
M/s.LION Dates Impex Pvt Ltd., No.40, Sterling Road, Nungambakkam, Chennai – 600 034, Rep. by its Managing Director P.Ponnudurai. – Plaintiff
Versus
P.Mohammed Ibrahim, Proprietor, LION Brand Sharbath Company, New No.13, (Old No.2), Middle Street, Kallasapuram, Tiruvelveli – 627 001, Tamil Nadu, India. – Defendant
For the Plaintiff : Mr.AR.L. Sundaresan, Senior Counsel, for Mr.G.K.Muthukumar, Advocate.
For the Defendant : Mr.K.Rajasekaran, Advocate.
IMPORTANT
Trade Mark “LION” – When two or more persons are using the same trade mark, one cannot sue the other for infringement.
A. Trade Marks Act, 1999 Section 28 Being the prior user of the trade mark “LION” brand for the products under Class 32, right of trade of the defendant using the trade mark “LION” brand for its product falling under Class 32 cannot be restrained and interfered at the instance of the plaintiff, who is the subsequent user of the said trade mark for the product, which already been marketed by the defendant.
[Para 31]
B. Trade Marks Act, 1999 Section 11 Declaring a trade mark as a well known trade mark – “LION” brand claimed by the plaintiff, it has not obtained any such declaration from the Registrar – A self proclaimed declaration of well known trade mark as stated by the plaintiff is contrary to Section 11(6) of the Trade Mark Act.
[Para 32]
C. Trade Marks Act, 1999 Section 28 Registered trade mark falling under Class 32 – When there is no material to show that it is confined only to Nannari Syrup, one has to presume that the defendant had registered for all products under Class 32 and is in sale of the other syrup and sharbath including Nannari – Having valid trade mark registration, for goods falling under Class 32, the defendant trade in any product falling under Class 32 any syrup covered under Class 32 will not amount to any infringement or passing off, in respect of the plaintiffs business.
[Paras 34 and 38]
D. Trade Marks Act, 1999 Section 11 Mere mis-description of the ”trade name” cannot lead to an inference that the ‘Trade Mark’ was not in use.
[Para 35]
E. Trade Marks Act, 1999 Section 11 Trade mark “LION” device or LION cannot acquire secondary meaning as claimed by the plaintiff because the word LION is common name used in trade for multiple products – No exclusive invention or innovation in the name LION could be attributed – Claim of the plaintiff that it has exclusive right over the trade mark LION is unsustainable.
[Para 36]
F. Trade Marks Act, 1999 Section 28(3) and 34 Trade Mark “LION” – When two or more persons are using the same trade mark, one cannot sue the other for infringement – Plaintiff not entitled to sue the defendant for infringement of trade mark and for passing off more so, when the defendant is the prior user of the trade mark – Plaintiff not entitled to file the suit for infringement against the defendant – Adoption of the mark for the sharbath business of the plaintiff cannot be considered as mala fide however, such adoption cannot take away the right of the defendant to carry on the trade for their products.
[Paras 42 to 45]
Cases Referred :
Amaravathi Enterprises v. Karaikudi Chettinadu
American Greetings Corp’s Application ((1983) 2 All ER 609, 619)
American Home Products v. Mac Laboratories, 1986 (1) SCC 465
Ashok Leyland Limited v. Bluse Hill Logistics Pvt. Ltd.
Austin Nichols & Co. v. Arvind Behl, Director, Jagatjit Industries Ltd., 2006 (32) PTC 133.
Batt case ((1898) 2 Ch D 432, 436 : 15 RPC 262,266)
Chorion Rights Limited v. M/s.Ishan Apparel (2010 SC Online Del 1518)
Dhariwal Industries Ltd., v. M.S.S., Food Products (2005 (3) SCC 63)
John Batt & Co. v. Dunnett (1899 AC 428 : 16 RPC 411)
Syed Mohideen v. P.Sulochana Bai (2016 (2) SCC 683)
JUDGMENT
G.Jayachandran, J. – The plaintiff is a company incorporated in the year 1995 under the name and style of “LION Dates private limited”. It changed the name in the year 2000 as “LION Dates Impex Private Limited”. The plaintiff deals with the dates and dates syrup under the trade name and trade mark “LION”. The suit is filed seeking injunction against the defendant for infringement of his trade mark, copyright and for passing off.
2. The defendant who is doing the business of manufacturing and sale of Nannari sharbath in the name of “LION brand Nannari” since 1955 has denied the allegation of infringement and also made a counter claim against the plaintiff on the ground that they are the prior user of the disputed trade mark.
3. The case of the plaintiff is that, ever since incorporation of its company in the year 1984 when the promoter and Managing Director P.Ponnudurai initially commenced the business as proprietary concern in supply and sale of dates to various retail shops in Tirunelveli District, using the trade mark LION Dates. The device of ‘LION’ was conceived by him and used continuously and uninterruptedly as the trade mark in relation to the goods sold in his business.
4. In the year 1995, the plaintiff’s company was incorporated as company under the Companies Act, 1956 by name “LION Dates Private Ltd.,” later changed the name as “LION Dates Impex Private Ltd.,”. In the year 2000, in view of the business growth and expansion, the plaintiff has expanded his business to market other products such as Surbath; squash; jam; oats; Tamarind; Vermicelli; Salt; Olive Oil and other food products which are all popular products of the plaintiff.
5. The plaintiff has registered their trade mark “LION and the device of a LION” pertaining to dates and dates syrup. The details for which they have obtained trade mark is as below:-
S.No
Trademark Registration No.
Class
Date of effect of registration
Trademark
Goods
1
558998
29
23.09.1991
LION & Device of LION (Label Mark)
Seedless Dates
2
796373
32
25.03.1998
LION & Device of LION
Dates Syrup
3
809917
29
13.07.1998
LION (Word Mark)
Dates
4
1481746
32
25.08.2006
LION & Device of LION (Label Mark)
Dates Syrup
5
1607981
29
04.10.2007
LION & Device of LION (Label Mark)
Dates
6
1675881
29
15.04.2008
LION & Device of LION (Label Mark)
Dates
7
1739793
32
03.10.2008
LION & Device of LION (Label Mark)
Dates Syrup
6. The plaintiff has obtained copyright registration for the “LION Dates” with device of LION as an artistic label under the copy right registration No.90180/2011 dated 11.03.2011. Further, its application for trade mark for the other goods is pending registration and the details are as below:-
S.No
Trademark Application No.
Class
Trademark
Goods
1
2801040
32
LION & Device of LION and Date Sharbat Label
Non-alcoholic drinks, fruit drinks and fruit juices including Sharbat, Syrups/ Squash and other preparations for making beverages
2
2801039
32
LION & Device of LION and Date Rose Sharbat Label
Same as above
3
2801036
32
LION & Device of LION and Date Squash Label
Same as above
4
2801037
32
LION & Device of LION and Orange Squash Label
Same as above
5
2801038
32
LION & Device of LION and Pinapple Squash Label
Same as above
6
2801041
32
LION & Device of LION and Grape Squash Label Same
as above
7
2826463
16
Shape and Size of 700 ml bottle pertaining to the above said goods sold under the above said Labels.
As packaging for sharbat, squash and syrups.
7. While so, the plaintiff has come to know in the month of October 2012 that the defendant with web address www.lionbrandsyrup.com using trade mark “LION” brand and device of LION for sharbath and Squashes. Upon investigation and enquiry, the plaintiff came to know that the defendant has obtained a trade mark registration for the said trade mark “LION” brand and device of LION in class 32 under trade mark registration No.471018 claiming the goods to be synthetic syrup and selling them in the market.
8. The defendant’s product is mentioned in the said trade mark label as Nannari syrup. The trade mark registration has been granted to the defendant to be used along with label containing the word “Nannari” written in Tamil language. Coming to know about the registration granted in favour of the defendant, the plaintiff has applied for rectification and the said application is pending. Though the defendant has made a user claim from 01.02.1971, in the trade mark application made on 20.04.1987, the said statement is false and baseless. The defendant has discontinued the use of the same for several years and only after the plaintiff launched its product sharbath and squash, the defendant has commenced business once again under a deceptively similar trade mark and trade dress so as to captilize the good will and reputation of the plaintiff. The plaintiff has also come to know that the defendant has very recently changed the design, shape and size of the “Nannari Syrup” bottle from a big glass bottle to a plastic bottle resembling that of the plaintiff’s squash and sharbath 700 ml bottle. This shows the dishonest adoption of the defendant so as to piggy back at the plaintiff’s cost. The plaintiff has therefore prayed for the following reliefs:-
“a. A permanent injunction restraining the defendant, its proprietors, all its principal officers, representatives and any other person claiming any right through or under the defendant from in any manner infringing the trademark registrations of the plaintiff under trademark registration numbers 558998, 796373, 809917, 14181746, 1607981, 1675881 and 1739793 and thereby from using, manufacturing, packing, distributing or selling or offering for sale, advertising, displaying or otherwise directly or indirectly dealing with any product more so sharbath and squash using the word LION and LION Device in any manner whatsoever.
b. A permanent injunction restraining the defendant, its proprietors, all its principal officers, staff, men, agents, servants, successors assigns in business, representatives and any other person claiming any right through or under the defendant from in any manner infringing the copyright registration of the plaintiff under copyright registration No.A-90180/2011, dated 11.03.2011 and thereby from using, manufacturing, packing, distributing or selling or offering for sale, advertising, displaying or otherwise directly or indirectly dealing with any product more so sharbath and squash using the word LION and LION Device in any manner whatsoever.
c. A permanent injunction restraining the defendant, its proprietors, all its principal officers, staff, men, agents, servants, successors, assigns in business, representatives and any other person claiming any right through or under the respondent from in any manner passing off the products of the defendants more so sharbath and squash, under the trade name LION BRAND COMPANY and under any other identical or deceptively similar trade name/label, to that of the plaintiff’s trade name and LION and device of LION trademark/labels and thereby from using, manufacturing, packing, distributing or selling or offering for sale, advertising, displaying or otherwise directly or indirectly dealing with any product more so sharbath and squash under a trade name or trademark/label, using the word “LION” and Device of LION or a deceptively similar label in any manner whatsoever.
d. A permanent injunction restraining the defendant, its properties, all its principal officers, staff, men, agents, servants, successors, assigns in business, representatives and any other person claiming any right through or under the defendants more so sharbath and squash, under a trade dress which is identical or deceptively similar that of the plaintiff’s 700ml squash and sharbat bottles filed herewith as plaint document 21 and thereby from using, manufacturing, packing, distributing or selling or offering for sale, advertising, displaying or otherwise directly or indirectly dealing with any product more so sharbath and squash in bottles/containers as under plaint documents 22 and 23.
e. The defendant be ordered to pay to the plaintiff a sum of Rs.25,00,000/- by way of damages.
f. A Preliminary decree be passed in favour of the plaintiff and against the defendant, directing the defendant to render a true and faithful accounts of all profits made by its, using the plaintiff’s sad registered design and trade dress, and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, together with interest, after the defendant has rendered accounts.
g. The defendant be directed to deliver-up to the plaintiff for destruction, all packaging labels, blocks, dyes, all other print materials, stickers, signage, visiting cards, letter heads, catalogues, pamphlets, brochers, all other advertising and promotional material, all stationery, and such other material used in making the defendants packages.
h. For cost and;
i. For such other and further reliefs as the nature and circumstances of the case may require and thus render justice. “
9. The defendant has filed written statement with counter claim alleging that the plaintiff has illegally and unlawfully encroached the reputation created by the defendant in respect of sharbath (syrup). The plaintiff who were all along carrying trade of “Dates” attempted to enter into the Fruit Juice Business, for which, they have no reputation. Through this suit, the plaintiff attempts to restrain the defendant from selling their sharbath products which has market for last 50 years. The defendant has raised the following grounds as a defence and the reasons for the counter claim.
“a) The defendant is prior user they created and adopted the Trade Mark LION for sharbath business (from 1955);
b)The defendant is the registered proprietor of their Trade Mark LION for sharbath as early as 20.01.1970 (not renewed subsequently due to the death of defendant’s father) and second registration is on 20.04.1987 (valid and renewed);
c)The plaintiff is not carrying on sharbath or syrup business and only entered into fruit juice business in 2013;
d)The plaintiff is only carrying on Dates business as admitted by them only since 1995. (even for which evidence filed is available only from 2001);
e)The Trade Mark Registration of plaintiff is only restricted to the goods i.e., Dates in Class 29 and Dates Syrup in Class 32;
f)The plaintiff having the knowledge of the product of the defendant and only copied Trade Mark from the defendant and later filed a Rectification Application only in 2012 but having knowledge of the prior adoption of trade mark LION for sharbath by the defendant. By unimpeachable documents filed by them in Rectification proceedings the defendant confirmed their prior user. Despite knowing the prior user, the present suit is filed due to bad faith mala fide intention and to flush out the defendant from their sole business;
g)The plaintiff suppressing the material facts and concealing the documents which were very well in their knowledge approached this Hon’ble Court without clean hands. Hence the suit has to be dismissed, more so, the plaintiff had obtained an Ex.-parte Interim Order by “suppresoverisuggestiofalsi”. Therefore the suit has to be dismissed in limini;
h)The suit indirectly prohibits anyone from using the Trade Mark LION which for several decades are used by defendant for different goods and after obtaining interim order the plaintiff plans to venture/enter into goods of where defendant is prior users, which cannot be permitted;
i)The word LION and the Picture of the LION are common and if so the plaintiff can have the reputation and claim right only for the goods i.e., Dates which they are trading and not have the monopoly to use the word and Picture of LION over all other goods and restrain others from using the word and picture as LION.”
10. According to the defendant, E.Peerkhan Sahib, the father of the defendant started the business of manufacturing and sale of “Nannari sharbath” as a cottage industry in the year 1955. Small quantities of “Nannari sharbath” were sold by the defendant’s father in bicycle all over Tirunelveli District. The defendant’s father adopted the arbitrary trade mark “LION” brand with the picture of LION for unique identification of his sharbath. On 20.01.1970, the defendant’s father applied for the registration of the said LION brand in Class 32, in respect of syrups for making beverages. Due to defendant’s father’s ill-health, the trade mark was not renewed subsequently. When the defendant took charge of the business, he applied for trade mark on 20.04.1987, for synthetic syrup claiming user from 1971. As the market for “Nannari sharbath” grew, other sharbaths also were brought to the market.
11. The defendant’s company popularly known as “LION” brand syrup company and “LION” brand sharbath Company. It has license from Central and State Governments and sales tax returns filed since 1965. Due to development of technology as common in trade, pet bottles are used instead of glass bottles.
12. The defendant has obtained trade mark in Class 32 for their improvised LION brand label which was used from 01.04.2004. Further, the defendant has applied for trade mark under Class 35 for the service mark LION brand sharbath company and the same is pending. Primarily, LION brand Nannari sharbath was sold by the defendant’s father in the early 1950s, over the time, the defendant have expanded the LION brand syrup range to include pineapple, orange, mango, grape, rose, ice cream and apple flavours.
13. The plaintiff who primarily deals with dates and recently entered in the business of sharbath, squash and other food products has no locus standi to file the present suit for infringement against the defendant who is prior user.
14. It is admitted by the plaintiff that only in the year 2012-2013, they have ventured into the business of syrup and sharbath and their application for registration of the trademark is pending. Whereas, the plaintiff has registered the trade mark “LION” brand as early as in the year 1970 and reiterated the same by registering the said trade mark afresh, in the year 1987. The plaintiff having the knowledge of the product of the defendant had copied the trade mark of the defendant and suppressing the material facts and documents has filed application for rectification. Hence, the defendant sought for dismissal of the suit and decree in respect of the counter claim as under:-
“A)Granting perpetual injunction restraining the plaintiff, their Directors, proprietor, partners, men, distributors, stockiest, agents, servants, retailers, wholesalers, representatives or any other person claiming under them from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in goods i.e., Sharbath, Syrups, Fruit Drinks, Fruit Juice and other preparations for making beverages identical or deceptively similar under the Trademark “LION” or any other Trade Mark resembling the defendant’s registered Trade Mark “LION” or any other Mark which is identical or deceptively similar to the defendant’s trade mark “LION” so as to infringe the defendant’s registered trade mark;
B)Granting perpetual injunction restraining the plaintiff, their Directors, proprietors, partners, men, distributors, stockiest, agents, servants, retailers, wholesalers, representatives or any other person acting under them from in any manner manufacturing, selling, offering, sale, stocking, advertising directly or indirectly dealing in any goods i.e., sharbath, syrups, fruit drinks, fruit juice and other preparations for making beverages identical or deceptively similar under the Trade Mark “LION” or any other Trade Mark resembling the defendant’s trade mark “LION” or any other identical or similar to the defendant’s trade mark so as to pass off or enable passing off the goods of the plaintiff as and for the goods of the defendant;
C)Directing the plaintiff to deliver to the defendant all the goods, products, advertisements, letterheads, key chain, stickers, cartons, sachets, labels, polythene bags and other bags and other objects bearing and containing Marks deceptively resembling the Trade Mark of the defendant, that are in the possession of the plaintiff,to the representative of the defendant for destruction;
D)To pass a preliminary decree in favour of the defendant and against the plaintiff to render accounts of profit made by them by use of the impugned trade marks or by using of any other deceptively similar trade mark and a final decree passed in favour of the defendant and against the plaintiff for the amount of profits found to have been earned by the plaintiff, after the latter has rendered accounts;
E)Directing the plaintiff to pay the cost of the counter claim
F)To pass such further reliefs as this Hon’ble Court may deem fit and proper in”.
15. Based on the pleadings, this Court has formulated the following issues:-
“1.Whether the plaintiff’s trademark LION and Device of LION is well known in India, particularly in Tamil Nadu ?
2.Whether the plaintiff is the prior user of the trademark LION and Device of LION for Sharbath and squash products ?
3.Whether the defendant is into the production and sale of any other syrup, sharbath and squash products other than nannari from the year 1955 as claimed by him?
4.Whether the business of the defendant with respect to nannari syrup is continuous and without any break or interruption since 1955 till date ?
5.What trademark the defendant has used with respect to its nannari syrup from his inception as claimed by him till date ?
6.Whether the plaintiff’s trademark LION and Device of LION has acquired secondary meaning and association with the plaintiff?
7.Whether the defendant can expand its business into other areas in which the plaintiff is the prior user ?
8.Whether the defendant is liable for infringement /passing off with respect to the plaintiff’s business other than for nannari syrup ?
9.Whether the defendant who is claiming a right over the LION trademark, can simultaneously claim that such word to be common to trade ?
10.Whether the plaintiff is entitled to damages and to the other reliefs prayed for ?
11.Whether the defendant is the prior user of the mark LION Branch for their sharbath business since 1955 ?
12.Whether the defendant had registered their trade mark on 20.11.1970 under Trade Mark Application No.262052 in Class 32 and had filed Trade Mark Application on 24.04.1987 for the mark LION Brand with the device LION under Trade Mark Application No.471018 under Class 32 for synthetic syrup ?
13.Whether the plaintiff had moved to sharbath or syrup business only during 2013?
14.Whether the plaintiff is entitled to sue the defendant for infringement of registered trade mark and passing off when the defendant is the prior user of mark ?
15.Whether the adoption of the mark for the sharbath business by the plaintiff is bonafide ?
16.Whether the defendant is entitled for their counter claim seeking injunctino against the plaintiff by virtue of they being the prior user of the mark LION with the device of LION? “
16. On behalf of the plaintiff, Mr.P.Ponnudurai, the Managing Director of the plaintiff company was examined as P.W.1 and 62 exhibits were marked as Exs.P.1 to P.62. On behalf of the defendant, Mr.Mohamed Ibrahim, the defendant himself was examined as D.W.1 and 20 exhibits were marked as Exs.D.1 to D.20.
17. The learned counsel for the plaintiff would submit that the plaintiff’s predecessor in title used the trade mark “LION” and device of LION from the year 1985. Using the said mark “LION” as his trade mark for Dates. In the year 1996, the plaintiff extended his business to Dates syrup and using the same continuously and uninterruptedly. In the year 2012-213, the plaintiff extended his business further and ventured in squash and sharbath production. The plaintiff is having valid trade mark registration for LION Dates and LION Dates Syrup. Its application for trade mark registration in respect of LION Dates squash and sharbath are pending for registration. While so, the defendant who had subsequently entered into the market for syrup, use the trade mark ‘LION’ while it has registration only for “Nannari syrup” and not for any other product. The defendant has no document to show that it has registered trade mark for any other product other than “Nannari syrup”. The defendant was carrying on business in the trade name of LION syrup has changed his trade name into “Singam Mark Sharbath Company” from 1983. Referring Exs.P.39 to P.49, the learned counsel for the plaintiff would submit that though under Ex.D.1, the defendant obtained registration for the LION brand in the year 1970, the said registration got lapsed since, the defendant did not renew the trade mark. Later, fresh trade mark was issued to the defendant under Ex.D.2 in the year 1986. The said trade mark registration is only in respect of “Nannari syrup” and the label “Nannari” in Tamil to be used together with the trade mark “LION brand Nannari syrup”. This trade mark registration should confine only to “Nannari syrup” and no other juice or essence.
18. Referring sales tax assessment order – Ex.D.6, the learned counsel for the plaintiff would submit that the trade name of the defendant in the year 1986 was “LION” brand company and their business was manufacturing and marketing sharbath. Later, the trade name of the defendant got changed as “Singam Mark Syrup”. For the years 1983 to 1993, the sales tax assessments were submitted in the name of “Singam Mark Syrup”. The sales tax assessment order, marked as Ex.P.39 to P.49 indicate that the defendant has changed his trade name from “LION brand syrup” to “Singam mark syrup”. Therefore, use of trade mark “LION” was not continuously and uninterruptedly used by the defendant.
19. Relying upon the judgment rendered in Amaravathi Enterprises v. Karaikudi Chettinadu, learned counsel for the plaintiff would submit that any party using prior user, as a shield in an action for infringement, it is necessary to prove that they have been continuously using the trade mark in respect of the goods manufactured or marketed by them.
20. Referring Exs.D.1 and D.2 and Exs.P.39 to P.49, and Ex.63, the learned counsel for the plaintiff would submit that the defendant cannot take the shield of prior user since, the use of “LION” brand was not continuous and uninterrupted. Further, it is submitted by the learned counsel for the plaintiff that even assuming that the defendant is a prior user of the trade mark “LION” brand it has to be used along with the device “Nannari Syrup” in Tamil and should be used only for “Nannari Syrup” and not for any other products.
21. Referring Sections 28, 29 and 34 of the Trademarks act, the learned counsel for the plaintiff would submit that any person who has obtained registered trade mark can enjoy the right subject to the restriction and condition imposed by the provisions of the act. The trade mark registration granted in favour of the defendant is for a goods falling under the category of synthetic syrups on condition both the label shall be used together as one trade mark. Therefore, the defendant cannot use the registered trade mark for any other product or in isolation without using the trade label “Nannari” in Tamil. In support of the said submission, the learned counsel would rely upon the judgment of the Madras High Court rendered in Ashok Leyland Limited v. Bluse Hill Logistics Pvt. Ltd..
22. Contrarily, the learned counsel for the defendant would submit that the defendant’s fat her started the “Nannari syrup” business in a small scale in the year 1955 in Tirunelveli District and has developed a good will and reputation on his own due to its quality and standard. In the year 1970, the trade mark “LION” brand was registered for making beverages under Class 32.
23. The defendant’s device LION head is unique and distinguishable that of the full body LION device adopted by the plaintiff. The plaintiff who is the lateral entrant in the field of marketing Dates trying to infringe upon the good will of the defendant by marketing sharbath and syrup from 2012 onwards. The sales tax returns relied by the plaintiff itself indicate the continuous and uninterrupted expansion of the defendant besides the statement given by the Auditor. The trade name “LION brand syrup” mentioned in Tamil language as “Singam Mark Syrup” in the course of sales tax assessment orders, does not mean that the defendant has discontinued the business. The Tamil translation of the trade mark to English obviously, by the State Government officials cannot take away the prior user/ first user right of the defendant.
24. As far as the mark “LION” with respect to the sharbath and syrup, admittedly, it was the defendant who had been in the business since 1955 is the prior user. Exs.D.1 and D.2 fortifies the right of the defendant for use of the trade mark “LION” in their product. Contrarily, the documents relied by the plaintiff and the admission of the plaintiff in the plaint will prove that the plaintiff has entered in the business of sharbath and syrup only in the year 2012-2013. Having registered under Class 32, the trade mark of the defendant can be used for all products covered under Class 32. It is not necessary that the defendant had confine only to “Nannari syrup” alone. The Rectification Application before the Intellectual Property Appellate Board (IPAB), is an attempt to fish out of shallow water. It is filed not with good intention by improving the turnover and its presence in the market in respect of Dates, the plaintiff cannot grab the trade of a smaller entrepreneur. Under Ex.D.3, the defendant has also applied for trade mark registration in respect of the syrups and other preparations for making beverages in the name “LION” brand syrup company. Relying upon Exs.D.1 to D.6 which are the registration certificate; application for registration regarding trade mark “LION” brand coupled with the assessment orders of the defendant and copies of assessment orders challan for payment of excise duties, the learned counsel for the defendant would submit that being a prior user of the trade mark “LION”, the defendant is protected under Section 29(4) of the Trade Mark Act.
25. Relying upon Ex.D.18, the learned counsel for the defendant would submit that the defendant though entitled to prevent the plaintiff from using the trade mark “LION” being the prior user and prior allotter of the trade mark, having registered trade mark for Dates and Dates products, contrary to Section 34 of the Trade Mark Act, the plaintiff has interfered with the use of the ‘Trade Mark’ by the prior user. Regarding the shape of pet bottle containers of the plaintiff and the defendant, the learned counsel would submit that there is no similarity between these two bottles and therefore, the allegations against the defendant that they has changed the shape of the container similar to the plaintiff is patent lie.
26. Regarding the claim of the plaintiff that their trade mark “LION” brand is a well known trade name, the learned counsel for the defendant would submit that the well known trade mark status has to be decided by the Registrar of Trade Marks based on various parameters, which are enunciated in the Section 11 of the Trade Mark Act. The plaintiff cannot make self declaration that their trade mark is well known trade mark.
27. Sections 28, 29, 30 & 34 of the Trade Mark Act, makes very clear that even a registered trade mark holder cannot interfere the use of a trade mark identical or nearby resembling by any person who is the prior user of the first mentioned trade mark, in respect of the goods or service which the person dealing. Even in case two or more persons are granted same trade mark for different products, they have exclusive right to trade their respective products without disturbing the right of the other trade mark holder. Holding of trade mark or trade label for a particular product ipso facto does not give right to the holder of the said trade mark to use the said trade mark for all or any product other than the product, the trade mark was granted. The right of prior user is discussed in Chorion Rights Limited v. M/s.Ishan Apparel (2010 SC Online Del 1518) by the High Court of Delhi as under:-
“14. The defendant emphasizes that it cannot be injuncted as it was clearly “first past the post” as far as the question of use of the NODDY character is involved. Reliance was placed on the decision reported as Austin Nichols & Co. and Anr. v. Arvind Behl, Director, Jagatjit Industries Ltd. and Anr., 2006 (32) PTC 133. It was further submitted that having objected to the registration application in 2000, and not pursued it, Chorian cannot say that Ishan’s use of the mark is unjustified; principles of laches and acquiescence clearly bar such a plea. Ishan’s counsel also submitted that what Chorian has been able to establish – at the most – is that it engages in the business of licensing, without any intention of directly marketing goods or products, which can only be the standard for judging trademark infringement and passing off. Reliance is placed on the judgment of the Supreme Court, reported as American Home Products v. Mac Laboratories, 1986 (1) SCC 465, where it was held, inter alia, that:
“37. As the registration of a trade mark confers such valuable rights upon the registered proprietor thereof, a person cannot be permitted to register a trade mark when he has not used it in relation to the goods in respect of which it is sought to be registered or does not intend to use it in relation to such goods. The reason for not permitting such trade marks to be registered was thus stated by Romer, J., in In re the Registered Trade Marks of John Batt & Co. and In re Carter’s Application for a Trade Mark (1898) 2 Ch 432, 436 : 15 RPC 262, 266) :
‘….. one cannot help seeing the evils that may result from allowing trade marks to be registered broadcast, if I may use the expression, there being no real intention of using them, or only an intention possibly of using them in respect of a few articles. The inconvenience it occasions, the cost it occasions, is very large, and beyond that I cannot help seeing that it would lead in some cases to absolute oppression, and to persons using the position they have obtained as registered owners of trade marks (which are not really bona fide trade marks) for the purpose of trafficking in them and using them as a weapon to obtain money from subsequent persons who may want to use bona fide trade marks in respect of some classes in respect of which they find those bogus trade marks registered.’ The judgment of Romer, J., in Batt case ((1898) 2 Ch D 432, 436 : 15 RPC 262,266) was confirmed by the Court of Appeal ((1898) 2 Ch D 432, 439 and 442) and by the House of Lords sub nomine John Batt & Co. v. Dunnett (1899 AC 428 : 16 RPC 411).
38. To get a trade mark registered without any intention to use it in relation to any goods but merely to make money out of it by selling to others the right to use it would be trafficking in that trade mark. In Re American Greetings Corp’s Application ((1983) 2 All ER 609, 619), Dillon, L.J., said in the Court of Appeal :
‘Trafficking in a trade mark has from the outset been one of the cardinal sins of trade mark law. But there is no statutory definition of trafficking, and one may suspect that, as with usury in the Middle Ages, though it is known to be a deadly sin, it has become less and less clear, as economic circumstances have developed, what the sin actually comprehends.’ Trafficking must involve trading in or dealing with the trade mark for money or money’s worth, but it is not all dealing with a trade mark for money that is objectionable, since it has always been accepted that it is permissible to self a trade mark together with the goodwill of the business in the course of which the trade mark has been used.”
28. From Exs.D.1 and D.2, undoubtedly, the defendant has proved that they are the prior user of the trade mark “LION” brand for “Nannari syrup and sharbath”. Registration is under Class 32. No doubt, there was some break in the renewal of the trade name registration but, it do not take away the continuous use of the said trade mark “LION” by the defendant and a status of prior user. The defendant’s use of the trade mark and label for any product under Class 32 cannot be restrained or held to be infringement of the plaintiff’s trade mark, who has registered trade mark only in respect of Dates and Dates Syrup that too much after the defendant.
29. The contention of the plaintiff that there was discontinuation in the use of trade mark by the defendant not been established and in fact, the documents of the plaintiff which is marked as Exs.P.39 to P.49 which are the sales tax assessment of the defendant covering the period 1983 to 1993 would only establish the fact that the defendant has been trading in sharbath using the trade name “LION” brand. The case of discontinuation of usage of trade mark contended by the plaintiff is not established contrarily, has been disproved by the documents filed by the defendant. The defendant being the prior user and having first past the post cannot be restrained by the plaintiff who has joined the race of trading in sharbath and syrup subsequently, i.e., in the year 2012-2013. In Dhariwal Industries Ltd., v. M.S.S., Food Products (2005 (3) SCC 63) the Hon’ble Supreme Court has held as below:-
” As has been noticed already, the prima facie establishment of prior user goes a long way in enabling the plaintiff to claim an injunction in a passing-off action. In that context, learned counsel for the defendants raised certain aspects for consideration. He submitted that the plaintiff has not come to court with clean hands and has, in fact, come to court with a false case of date of knowledge of the user of the mark “Manikchand” by the defendants and this fact has been found by the High Court itself. He further submitted that once the story of the plaintiff that he came to know of the user of the mark by the defendants only the previous day to the filing of the suit was discarded, obviously, it was a case where the plaintiff had not come to court promptly to object to the user of the mark by the defendants and this delay and latches, disentitle the plaintiff to an injunction. Counsel submitted that the High Court has not properly appreciated the effect of its own finding on the question of delay and the finding on the arising of the cause of action as set up by the plaintiff, on the bona fides of the claim for injunction itself. Counsel submitted that the defendants had been using the mark “Manikchand” for quite some time; that it has attained popularity; that the mark was being widely used and advertised and there was no reason to interfere, with an interim injunction, preventing such use by the defendants. Counsel in this context also submitted that the present suit was really a counter-blast to the action initiated by the defendants in the High Court of Bombay seeking to restrain the plaintiff from using the mark “Malikchand”, being deceptively similar to the mark “Manikchand” being used by the defendants. In answer, learned counsel for the plaintiff submitted that the filing of the suit by the present defendant in the High Court of Bombay, though not against the real owner of the mark, created apprehension in the mind of the plaintiff about the user of its mark “Malikchand” and that resulted in the filing of the suit by the plaintiff in the trial court. It was submitted that there was no proper plea of delay and latches either in the objection to the application for injunction or in the petition filed under Order XXXIX Rule 4 of the C.P.C. so as to warrant denial of injunction on the ground of delay and latches by this Court. It was submitted that even in the written submissions filed, a case of delay and latches had not been set out and in any event, there was no adequate plea of delay and latches based on which the plaintiff could be denied relief. It was submitted that the defendants may be having a large volume of trade, but that does not mean that the big fish should be allowed to swallow the small fish in circumstances like the present. While considering the balance of convenience, the question of delay and latches might be a relevant aspect to be considered, but once that aspect has been adverted to and an interim injunction granted by the trial court and confirmed by the High Court in appeal, this Court may not be justified in refusing the grant of interim injunction on the ground of delay and latches. In any event, this was a case where both sides were trying to assert their respective rights and the litigations were the result of such attempts. The High Court had adverted to this aspect while confirming the order of injunction. We see no reason to interfere on this ground at this prima facie stage.”
30. In Syed Mohideen v. P.Sulochana Bai (2016 (2) SCC 683), the Hon’ble Supreme Court has considered a situation where two or more persons should register as proprietors to trade mark which are identical, it has been held as follows:-
“27. Sub-section (3) of Section 28 with which we are directly concerned, contemplates a situation where two or more persons are registered proprietors of the trade marks which are identical with or nearly resemble each other. It, thus, postulates a situation where same or similar trade mark can be registered in favour of more than one person. On a plain stand-alone reading of this Section, it is clear that the exclusive right to use of any of those trade marks shall not be deemed to have been acquired by one registrant as against other registered owner of the trade mark (though at the same time they have the same rights as against third person). Thus, between the two persons who are the registered owners of the trade marks, there is no exclusive right to use the said trade mark against each other, which means this provision gives concurrent right to both the persons to use the registered trade mark in their favour. Otherwise also, it is a matter of common sense that the plaintiff cannot say that its registered trade mark is infringed when the defendant is also enjoying registration in the trade mark and such registration gives the defendant as well right to use the same, as provided in Section 28(1) of the Act.
28. However, what is stated above is the reflection of Section 28 of the Act when that provision is seen and examined without reference to the other provisions of the Act. It is stated at the cost of repetition that as per this Section owner of registered trade mark cannot sue for infringement of his registered trade mark if the appellant also has the trade mark which is registered. Having said so, a very important question arises for consideration at this stage, namely, whether such a respondent can bring an action against the appellant for passing off invoking the provisions of Section 27(2) of the Act. In other words, what would be the interplay of Section 27(2) and section 28(3) of the Act is the issue that arises for consideration in the instant case. As already noticed above, the trial court as well as the High Court have granted the injunction in favour of the respondent on the basis of prior user as well as on the ground that the trade mark of the appellant, even if it is registered, would cause deception in the mind of the public at large and the appellant is trying to encash upon, exploit and ride upon on the goodwill of the respondent herein. Therefore, the issue to be determined is as to whether in such a scenario, the provisions of Section 27(2) would still be available even when the appellant is having registration of the trade mark of which he is using.
29. After considering the entire matter in the light of the various provisions of the Act and the scheme, our answer to the aforesaid question would be in the affirmative.”
31. Going by the provisions of law and the precedents, which are referred above, this Court is of the view that being the prior user of the trade mark “LION” brand for the products under Class 32, right of trade of the defendant using the trade mark “LION” brand for its product falling under Class 32 cannot be restrained and interfered at the instance of the plaintiff, who is the subsequent user of the said trade mark for the product, which already been marketed by the defendant.
32. Issue No.1:-
Under the Trade Mark Act, it is the Registrar of Trade Mark, who has to determine ‘Whether the trade mark is a well known trade mark or not ?’. The Registrar has to take into account the facts that are relevant to determine the trade mark as well known trade mark. The bench mark mentioned in Section 11 of the Trade Mark Act has to be satisfied before declaring any trade mark as a well known trade mark. As far as “LION” brand claimed by the plaintiff, it has not obtained any such declaration from the Registrar. A self proclaimed declaration of well known trade mark as stated by the plaintiff is contrary to Section 11(6) of the Trade Mark Act. Hence, it is held against the plaintiff.
33. Issue No.2:-
Exs.D.1 and D.2 are clinching evidence to hold that the defendant is the prior user of the trade mark “LION” and device of LION for sharbath and syrup products. Admittedly, the plaintiff has entered into the field of marketing sharbath and squash only in the year 2012-2013 whereas, the documentary evidence produced by the defendant indicates that the defendant was in the field even before 1968. Hence, this issue is negatived.
34. Issue Nos.3, 5, 11 and 12:-
The defendant has produced Ex.D.2 indicating that he has a registered trade mark for sharbath, goods falling under Class 32, ever since 1970. Through Letter – Ex.D.3, the defendant has obtained trade mark registration disclosing that they are in the trade since 1987. The use of the said trade mark for goods under Class 32 is well protected. The sale tax accounts of the defendant marked by the plaintiff and the defendant does not specifically indicate ‘whether the syrup and sharbath are confined to Nannari or other allied products also’. When there is no material to show that it is confined only to Nannari Syrup, one to presume that the defendant has registered for all products under Class 32 and is in sale of the other syrup and sharbath including Nannari. Accordingly, these issues are held against the plaintiff.
35. Issue No.4:-
The plaintiff taking advantage of referring the trade mark of the defendant in Tamil as Singam Mark, has made an attempt to impress upon the Court that the defendant had discontinued the use of the trade mark “LION” brand and there was break in their trade. Mere mis-description of the ”trade name” cannot lead to an inference that the ‘Trade Mark’ was not in use. The Tamil equivalent of word “LION” brand has been used in Exs.P.39 to P.49 and few other documents. The description of the proprietor and the product addressed are one and the same, use of the Tamil word “Singam Mark”, the tamil equivalent word of “LION” in English registered trade name does not connote that the defendant has discontinued the business. Accordingly, this issue is held against the plaintiff.
36. Issue No.6:-
The plaintiff trade mark “LION” device or LION cannot acquire secondary meaning as claimed by the plaintiff for the simple reason that the word LION is common name used in trade for multiple products. No exclusive invention or innovation in the name LION could be attributed. Hence, the claim of the plaintiff that it has exclusive right over the trade mark LION is unsustainable. Accordingly, this issue is held in negative.
37. Issue No.7:-
This issue is very hypothetical. Neither the defendant nor the plaintiff has made out any specific case of expansion of defendant’s business into the area of plaintiff’s prior use. It is an admitted case of the defendant that he has confined his business only to syrup and sharbath, whereas, the plaintiff business is in respect of Dates. As far as the facts of the case is concerned, the defendant is carrying on business only in respect of the goods covered under Class 32 for which, the defendant has registered trade mark and has proved that they are prior user of the said trade mark. For the reasons stated above, the defendant cannot be held liable for any infringement or passing off in respect of syrup falling under Class 32. For the reasons discussed above, this issue is held against the plaintiff.
38. Issue No.8:-
Having valid trade mark registration, for goods falling under Class 32, the defendant trade in any product falling under Class 32 any syrup covered under Class 32 will not amount to any infringement or passing off, in respect of the plaintiffs business. Hence, this issue is held against the plaintiff.
39. Issue No.9:-
The word ‘LION’ is common to trade. However, the artistic work and label of the respective parties namely, the plaintiff and the defendant are unique. As far as the said artistic work of the device LION, being unique, to that extent, the parties are directed to confine its usage to the respective products, even though, the word ‘per se’ is common to trade. Hence, this issue is held against the plaintiff.
40. Issue No.10:-
In view of the finding regarding the allegation of infringement being held against the plaintiff, the plaintiff is not entitled for damages or any other relief. Accordingly, this issue also held against the plaintiff.
41. Issue No.13:-
This is an admitted fact by the plaintiff that the application for trade mark LION and device of LION in respect of sharbath label; orange squash label; grape squash label and Date sharbath label are all pending before the Registrar Since 2013. Exs.P.14 to P.23 the documents relied by the plaintiff speaks about that. Hence, this issue is held against the plaintiff.
42. Issue No.14:-
Under Section 28(3) of the Trade Mark Act, when two or more persons are using the same trade mark, one cannot sue the other for infringement. Accordingly, the plaintiff is not entitled to sue the defendant for infringement of trade mark and for passing off more so, when the defendant is the prior user of the trade mark and in view of Section 34 of the Trade Mark Act, which saves the vested right in the prior user, the plaintiff is not entitled to file the suit for infringement against the defendant. Accordingly, this issue is held against the plaintiff.
43. Issue No.15:-
The adoption of the mark for the sharbath business of the plaintiff cannot be considered as mala fide however, such adoption cannot take away the right of the defendant to carry on the trade for their products. Hence, this issue is held against the plaintiff.
44. Issue No.16:-
As stated above, in view of Sections 28(3) and 34 of the Trade Mark Act, since both the plaintiff and the defendant have registered trade mark for their respective product, neither of them are entitled to file suit against each other for infringement. In view of the facts and law discussed at length, the issues framed are answered. Hence, both the plaint as well as the counter claim are liable to be dismissed.
45. In the result, all the issues are held against the plaintiff and the suit is dismissed. Further, in view of the reasons stated above, the defendant is also not entitled for any relief as claimed in the written statement and counter claim. The parties shall bear their own costs.
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