Food Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel & Ors  Insc 546 (29 August 2006)
Sinha & P.P. Naolekar
W I T
H CIVIL APPEAL NO.8817 OF 2003 S.B.SINHA, J :
of the provisions of the Trade and Merchandise Marks Act, 1958 (for short
"the 1958 Act") arises for consideration in these appeals arising out
of a judgment and order dated 08.05.2003 passed by the High Court of Gujarat at
appellant is a company incorporated under the Companies Act, 1956. The other
parties to these appeals were/are its Directors.
year 1965, one Rambhai Patel started a business of grinding and selling spices
under the name and style of 'Ramdev'. He had three sons and two daughters,
Arvindbhai, Hasmukhbhai and Pravinbhai were his sons. A partnership firm was
constituted in the year 1975. It applied for registration of the trademark
'Ramdev', which was granted on 03.01.1986 being Trademark No.447700. Another
partnership deed was executed in supersession of the earlier partnership deed
wherein new partners were inducted. On 06.01.1989, the appellant company was
incorporated whereby and whereunder the pattern of shareholding amongst the
three brothers was : Arvindbhai Group (40%); Hasmukhbhai Group (30%); and
Pravinbhai Group (30%). The registered trademark was assigned by 'Ramdev Masala
Stores' in favour of the appellant by a deed dated 20.05.1990. However, by the
said deed the goodwill was not assigned. The trademark together with the
goodwill was assigned in favour of the appellant company by another deed of
assignment dated 20.05.1992. A 'user' agreement was also entered into by the
same parties permitting the firm 'M/s. Ramdev Masala Stores' to use the said
trademark subject to the terms and conditions stipulated therein. Another
partnership firm being 'Ramdev Masala' was started on 01.04.1991 for carrying
on the trade of grinding and trading of masalas. A user agreement was also
entered into by and between the appellant company and the said firm permitting
the latter to use the registered trade mark for seven years i.e. from
01.04.1991 to 31.03.1998 in terms whereof it was stipulated :
WHEREAS the User is a firm registered under the Indian Partnership Act and
wishes to use in the city of Ahmedabad except the area of Naroda City of
Ahmedabad and district Mehsana, Gujarat State (India) registered proprietors
aforesaid registered Trade Mark (hereinafter referred to as "the said
Trade Mark") in respect of the said goods."User restricted to the
cities of Ahmedabad and Mehsana;
That the User
will continue to use the said mark only so long as he manufactures his goods in
accordance with the terms and specifications devised by the Registered
That within the
terms of this agreement and thereafter the User will not acquire any right to
the said mark by any means whatsoever except in accordance with law.
That the User
covenants not to use the said Trade Mark in the advertisement, journal label
and/ or other documents in such a manner that the said Trade Mark may in any way
be diluted in respect of distinctiveness of validity if necessary and indication
either usually, phonetically may be given to the purchasing public to the extent
that the User uses the said mark by way of permitted use only." Indisputably,
the firm 'Ramdev Masala Stores' was dissolved on 04.11.1991. Yet again a new
partnership firm came into being under the name and style of 'Ramdev Exports'.
The said partnership firm was constituted for the purpose of export of spices
manufactured by the appellant company.
not in dispute that the business of manufacturing and selling of spices under
the trade name of 'Ramdev' was being run by the three brothers through the
partnership firm being 'Ramdev Masala' was being run through seven outlets for
retail sale of the products of the Company.
also not in dispute that both the firms 'Ramdev Masala' and 'Ramdev Exports'
had distinct and separate existence. Their areas of operation were also
different. The respective roles assigned to each of the partnership firm had
clearly been specified in their respective partnership deeds. Whereas M/s.
Ramdev Masala was allowed to manufacture and trade in spices, the business of
M/s. Ramdev Exports was limited to export of the spices manufactured by the
appellant company. Yet again, the partnership deed of Ramdev Masala was amended
on 01.04.1995; in terms whereof the business of the said firm was confined only
to trading in spices manufactured by the appellant company. In other words, the
respective businesses under the partnership deeds of the said firms are stated
to be as under :
Type of business
of Ramdev Masala under the first partnership deed was grinding and selling of
Type of business
of M/s. Ramdev Masala under the second partnership deed was trading in spices.
The business of
M/s. Ramdev Exports was exporting the goods manufactured by the appellant
and differences having arisen between the members of the family and in
particular between the three brothers, the same was settled by their
well-wishers, pursuant whereto and in furtherance whereof a Memorandum of
Understanding (MOU) was executed by and between the parties, to which we would
advert to a little later.
premise that the respondents had been infringing its rights, trade name and
logo, the appellant company filed a suit in the City Civil Court, Ahmedabad, which was numbered as CS No.828 of 2000, inter
alia, for the following reliefs :
defendants by themselves, their servants, agents, partners and all persons
claiming through or under them be restrained by a perpetual order of this
Hon'ble Court from, in any manner, using the trade mark 'RAMDEV' in their
label, packing materials, advertising materials, business materials etc., in
respect of goods which are covered under registration of the plaintiff's mark
and/or any mark which may be identical and/or deceptively similar to the
plaintiff's registered trade mark and thereby restrain them from infringing the
plaintiff's registered trade mark bearing No. 447700 and other marks bearing
No.531084, 531085, 545253, 545253, 545255, 545257 and 545258." An
application for injunction was also filed wherein the following interim prayers
were made :
defendants by themselves, their servants, agents, partners and all persons
claiming through or under them be restrained by an order of temporary
injunction of this Hon'ble Court from, in any manner, using the trademark
'RAMDEV' in their label, packing materials, advertising materials, business
materials etc. in respect of goods which are covered under registration of the
plaintiff's mark and/or any mark which may be identical and/or deceptively
similar to the plaintiff's registered trade mark and thereby restrain them from
infringing the plaintiff's registered trade mark bearing No.447700 and other
marks bearing No.531084, 531085, 545253, 545255. 545257 and 545258, till the
hearing and final disposal of the suit.
by themselves, their servants, agents, partners and all persons claiming
through or under them be restrained by an order of temporary injunction of this
Hon'ble Court from using in relation to any spices, masala bearing the name
'RAMDEV' as produced with separate list or any label or packing material or advertising
material containing the trade mark 'RAMDEV' and/or any mark which is identical
and/or mark containing word 'RAMDEV' either on label or in trading style or
trading name, so as to pass off the defendants goods and/or business as that of
the plaintiff, till the hearing and final disposal of the suit." An
application was also filed for appointment of a Court Commissioner.
principal defences raised by the respondents in the said suit are as under:
has no exclusive statutory right to use 'Ramdev' apart from the label as a
whole. (Sections 15 and 17 issue)
respondent has a right to use the mark as concurrent user; (Section 29 issue)
That the use
complained of is protected, as bona fide user and furthermore the appellant is
not entitled to the reliefs sought for as the same were barred under the
principles of estoppel, acquiescence, etc.
ON THE APPLICATION FOR INJUNCTION
judgment and order dated 17.03.2000, the learned Trial Judge opined that the
plaintiff company was the owner of the trademark. It was further held that the
defendants had started manufacturing and marketing the same business which is
deceptively similar to the trademark of the plaintiff which created confusion
in the mind of public. However, the defendants were given liberty to
manufacture spices in their factory and sell the same in seven outlets under
the trademark 'Ramdev Masala'.
interpretation of the said MOU dated 30.05.1998, it was, inter alia, held :
if there is agreement between the parties that the defendant No.1 should
purchase spices from the plaintiff for the purpose of retail- sale in 7
outlets, it must have been mentioned in the MOU. No such condition is
mentioned. If that be so, it cannot be presumed that the defendants should
purchase spices from the plaintiff for the purpose of retail-sale in 7 outlets.
In case of written-agreement between the parties, it should be taken as it is.
It should be read as it is. No additional terms and conditions or agreement can
be presumed. Therefore, in absence of any specific condition that the
defendants should sell spices by using trade-mark "Ramdev" in 7
outlets by purchasing the goods from the plaintiff is not believable.
This condition also does not seem to
The defendants have arranged for the
packing material bearing regd. trade-mark "Ramdev" and used the same
for the purpose of retail business. These facts clearly suggest that there was
no restriction on the defendants to purchase spices from the plaintiff for the
purpose of retail business in 7 outlets. On the contrary, the defendant was at
liberty to manufacture in their factory and sell the same in 7 outlets for the
purpose of retail business.
Relevant portion of MOU is
reproduced earlier. Accordingly, the defendants are permitted to use the
trade-mark or logo "Ramdev" for the purpose of retail-sale in 7
outlets. The words used suggest that the defendants were entitled to use the
trade-mark "Ramdev" without any restriction for the purpose of retail
sale of spices. It was not compulsory on the part of the defendants to purchase
spices from the plaintiff. They can arrange or manufacture in their way and
sell the same in 7 retail outlets under the trade-mark "Ramdev".
Therefore, he cannot sell spices in
other shops under the trade-mark "Ramdev". He can run spices'
business and other business in his shop Ramdev Masala. The plaintiff cannot
restrict him." The respondents had been selling a large variety of spices
under the trade name "Swad". However, the packings and labels adopted
by them were also held to be deceptively similar to the trade-mark
"Ramdev" of the appellant. Although they had been manufacturing and
marketing spices under the trade name 'swad', the respondents had been writing
the words "Ramdev Masala" in such a manner that it creates confusion
in the minds of customers. It was, therefore, opined that the respondents had
been passing off their goods as if it was manufactured by the appellant. The
learned Judge, however, opined that as per the provisions of the Prevention of
Food Adulteration Act, 1955, it was mandatory to disclose the name and address
of the manufacturer they have been writing their name "Ramdev Masala"
as manufacturer which does not create any deception or confusion.
that the appellant got it entered in the records of the Registrar of Trade Mark
by following due procedure and acknowledging that the appellant company is the
registered proprietor of trade name bearing logo of "Ramdev", it was
held that as the respondents had started manufacturing and marketing spices
under the trade name "swad" and they had been selling spices in small
packets and in view of the averments made by the appellant that the labels and
packings adopted by the respondents were deceptively similar to the registered
trademark 'Ramdev' and, therefore, passing off goods as it is manufactured by
the plaintiff. The learned Judge further observed :
the packing material and label of both the parties, it is clear that the label
of the defendants is phonetically and visibly similar with the label of the
plaintiff. It is deceptively similar with the label of the plaintiff. It
creates deception as well as confusion in the minds of customers who are
literate, illiterate, male or female, who used to purchase in retail market
from small shops as well as big departmental stores. Therefore, there is every
likelihood of passing off the goods of the defendants as if it is manufactured
by the plaintiff." It was opined :
stated earlier, it is proved that the plaintiff is the regd. proprietor of
trade-mark "Ramdev" bearing registration No.44770. The plaintiff has
acquired goodwill and reputation of the trade mark "Ramdev Masala" in
and label adopted by the defendants for their products "Swad"
containing the word "Ramdev Masala" on the front page of the label in
larger size, in first alphabet definitely creates deception and confusion. It
is deceptively similar with the trade-mark of the plaintiff. Therefore, the plaintiff
has proved prima facie case on this point.
regards the balance of convenience and irreparable injury, it is settled legal
position that in case of deception public at large is affected.
customers are likely to be deceived.
prima facie case is proved, it is necessary in the interest of justice to
maintain status quo.
above all facts and circumstances, injunction should be granted against the
defendants." The learned Judge summarised his findings as under :
No.1 and consequently all defendants are entitled to use trade mark
"Ramdev" for the retail business of spices in 7 outlets as mentioned
in M.O.U. It is not mandatory for the defendants to purchase goods from the
plaintiff for retail sale in the said outlets.
defendants are at liberty to manufacture spices in their factory and carry on
retail business in 7 outlets by using trade-mark "Ramdev" bearing
No.1 is at liberty to run business under the trade name "Ramdev
Masala" for retail and wholesale business of spices, instant mix and other
he should not use trade-mark "Ramdev" except 7 outlets as mentioned
packing adopted by the defendants for their goods under the trade- name
"Swad" containing word "Ramdev Masala" is creating
infringement of the trade-mark of the plaintiff as it is deceptively similar.
Therefore, the defendants should be prevented in using the word "Ramdev
Masala" on their label and packing in any manner. However, the defendants
are at liberty to manufacture and market spices in any trade name without using
the word "Ramdev" or "Ramdev Masala".
respondents were, thus, restrained by temporary injunction from using
registered trademark, logo 'Ramdev' or any other trademark, which is identical
and deceptively similar to the trademark of the appellant in respect of label
and packing material of their goods except in seven outlets mentioned in MOU
till final disposal of the suit. They were held to be at liberty to run business
of spices under the trade name 'Ramdev Masala' without using the registered
trademark 'Ramdev Masala' except in seven outlets.
the parties preferred appeals thereagainst before the High Court. The High
Court by reason of its judgment opined:
The chain of
events goes to show that the business of grinding spices by using the words
"Ramdev" and "Masala" in the formation of firm name
continued all throughout and, thus, the respondents could be restrained from
carrying on business of manufacturing and selling of spices.
were permitted users in view of the registered user agreement executed between
The effect of
the MOU could not be wholly determined as the deeds of retirement had not been
Even if the MOU
is kept out of consideration in view of the Rules framed under Prevention of
Food Adulteration Act and Standards of Weights and Measures Act, the
manufacturer is duty bound to display its name and address in the manner, size
and placement as prescribed, on the packets. Thus, once a statute prescribes an
obligation on manufacturer and stipulates the minimum standards of measurement,
the manufacturer is bound to act in accordance with law and cannot be
restrained from complying with specific statutory provisions.
while upholding the findings of the learned trial Judge contained in paragraphs
41(i) and 41(ii); in respect of the directions contained in Para 41(iii),
in paragraph 41(iii) of the impugned judgment requires to be modified. The trial
court was in error for the aforestated reasons when it held that printing and
publication of the principal display panel was creating infringement of trade
mark as it was deceptively similar. The defendants cannot be prevented from
using the words "Ramdev" and "Masala" on their label and packing in light of the
statutory requirements as stated hereinbefore. However, the defendants shall
print the name of the manufacturer using only the minimum standard prescribed,
depending upon the nature of the packing and the placement of the principal
display panel shall be only at the bottom on the reverse side of the packing and
the front portion of the packing shall not carry any principal display panel
except for its own brand name "SWAD".
C.A. Sundaram and Mr. Ashok Desai, learned Senior Counsel appearing on behalf
of the appellant, in support of these appeals submitted :
was entitled to an order of injunction in view of the well-settled principles
of law that in case of a registered trade mark, the use thereof by any other
person would constitute an infringement thereof.
As there can be
only one mark, one source and one proprietor and in particular having regard to
the public interest, it was impermissible for the Trial Judge as also the High
Court to allow the respondents to use the registered trade mark of the
appellant either in the seven outlets or the goods manufactured by them
The trade mark
'Ramdev Masala' used by the respondents being deceptively similar with that of
the registered trade mark, the same would interfere with the quality control
product of the appellant and, thus, an order of injunction as was prayed for
should have been passed.
Trial Judge as also the High Court misconstrued and misinterpreted the
provisions of the 1958 Act vis-`-vis Prevention of Food Adulteration Act and
Standards of Weights and Measures Act, as in a case of such nature, a mandatory
injunction could be issued directing change of the corporate name of the
respondent No.1; as the appellant's right to protect its trade mark is
By reason of the
MOU, the respondents were only allowed to carry on the existing trade and
thereby the respondents were not permitted to start manufacturing spices under
the name and style of 'Ramdev Masala' as would be evident from the fact that
they were only entitled to carry on retail business from the seven outlets for
the purpose of selling only the end products upon printing the words "not
for resale" which is a clear pointer to the fact that merely a right to
trade therefrom and not manufacture of spices in the said name had been granted
in terms thereof.
F.S. Nariman, learned Senior Counsel appearing on behalf of the respondents, on
the other hand, submitted:
could exercise their right only for the purpose of implementing the MOU which
must be read with the deed of retirement dated 1st June, 1998, the remedies under the Trade Marks Act are not available
against the respondents who were members of the family.
although was not a party to the MOU, but having been represented by the
Directors therein must be held to be bound thereby and the parties to the MOU
having not filed any special leave petition in their individual capacities,
these appeals are liable to be dismissed.
As a distinction
exists between a lis based on infringement of a registered trade mark and
passing off, the principles which are applicable for grant of injunction in an
action for passing off are applicable in the instant case.
The claim of the
appellant to obtain an order of injunction is clearly barred by Sections 15(1)
and 15(2) of the 1958 Act insofar as a distinctive label having been registered
as a whole, no order can be passed restraining the defendants from using a part
thereof, as has been held in The Registrar of Trade Marks v. Ashok Chandra
Rakhit Ltd. [(1955) 2 SCR 252] and Re Cadbury Brothers' Application [1915 (2)
itself having applied for 'Ramdev' as a separate trade mark as would appear
from a public document, viz., the Trade Mark Journal No. 6 dated 25.11.2003 and
the said trade mark having not yet been registered in its favour, no order of
injunction as had been prayed for can be passed in its favour.
In any event, if
an order of injunction is passed, against the respondents, they would have to
be completely dependent upon the appellant for carrying on business which would
lead to discord between the members of the family, which was sought to be
avoided by the MOU.
In view of the
stipulations made in the MOU whereby and whereunder Shri Arvindbhai became the
absolute owner of both 'Ramdev Exports' and 'Ramdev Masala' and Hasmukhbhai and
Pravinbhai haing given up their right thereupon, the First respondent is
entitled to carry on the said business in those names which were not required
to be changed by reason of the said MOU.
stipulations made in the MOU clearly do not oblige the respondent to buy any
product from the appellant- Company, and in the event, if it be held that the
respondent is bound to sell only the products of the appellant, running of
business by the respondent would clearly depend upon the supply of the
materials by the appellant alone.
As by reason of
the said MOU, the respondent No.1 became entitled to use of mark from seven
outlets, the same envisages its right to sell goods having the said mark and
not sell of the plaintiffs' goods alone. The MOU must be interpreted in the
light of the deed of retirement dated 1.6.1998, which categorically contained a
stipulation that the continuing partner "have also decided to continue the
said business in the same firm names, viz., 'Ramdev Exports' and 'M/s. Ramdev
Masala'" and, thus, the appellant cannot now turn round and contend that
the respondent cannot carry on business of grinding and selling masala.
In the event the
appellant's contention is accepted, the right of the respondent to continue the
business under the name and style of or in the firm name of 'M/s. Ramdev
Masala' and 'Ramdev Exports' would become inconsistent with the deed of
retirement of Hasmukhbhai and Pravinbhai from 'M/s. Ramdev Masala' and 'Ramdev
A.M. Singhvi, learned senior counsel appearing on behalf of some of the
respondents supplemented Mr. Nariman urging that a document upon reading
contextually may be found to be a family settlement although the said
expression was not used therein. It was, therefore, urged that the courts would
lean strongly in favour of the family settlement and the MOU, so read, would
operate as estoppel against the other family members who have taken advantage
thereof from denying or disputing implementation thereof.
not in dispute that the lis between the parties would be governed by the 1958
similar" has been defined in Section 2(d) of the 1958 Act to mean as under:
mark shall be deemed to be deceptively similar to another mark if it so nearly
resembles that other mark as to be likely to deceive or cause confusion."
Section 2(j) defines "Mark" to include "a device, brand,
heading, label, ticket, name, signature, word, letter or numeral or any
combination thereof". The expression "registered proprietor" has
been defined in Section 2(q) to mean a person for the time being entered in the
register as proprietor of the trade mark in relation to a trade mark.
II provides for appointment of the Controller-General of Patents, Designs and
Trade Marks for the purpose of the said Act. Sections 15 and 17 read as under:
"Registration of parts of trade
marks and of trade marks as a series.—
proprietor of a trade mark claims to be entitled to the exclusive use of any
part thereof separately, he may apply to register the whole and the part as
separate trade marks.
separate trade mark shall satisfy all the conditions applying to and have all
the incidents of, an independent trade mark.
Where a person
claiming to be the proprietor of several trade marks in respect of the same
goods or description of goods which, while resembling each other in the
material particulars thereof, yet differ in respect of—
statement of the
goods or services in relation to which they are respectively used or proposed
to be used; or
number, price, quality or names of places; or
other matter of
a non-distinctive character which does not substantially affect the identity of
the trade mark; or
colour; seeks to
register those trade marks, they may be registered as a series in one
Registration of trade marks subject
to disclaimer.If a trade mark –
which is not the
subject of a separate application by the proprietor for registration as a trade
which is not
separately registered by the proprietor as a trade mark; or
matter which is common to the trade or is otherwise of a non-distinctive
character, The tribunal in deciding whether the trade mark shall be entered or
shall remain on the register, may require, as a condition of its being on the
register, that the proprietor shall either disclaim any right to the exclusive
use of such part or of all or any portion of such matter, as the case may be,
to the exclusive use of which the tribunal holds him not to be entitled, or
make such other disclaimer as the tribunal may consider necessary for the
purpose of defining the rights of the proprietor under the registration:
that no disclaimer shall affect any rights of the proprietor of a trade mark
except such as arise out of the registration of the trade mark in respect of
which the disclaimer is made." Chapter III provides for the procedure for
and duration of registration. The 1958 Act envisages filing of an application
(Section 18), advertisement thereof (Section 20), opposition thereto (Section
21) and correction and amendment thereof (Section 22). Registration of a trade
mark is envisaged in Section 23 of the 1958 Act, the effect whereof is stated
in Section 27 thereof.
rights which are conferred by registration are stated in Section 28 of the 1958
Act in the following terms:
"Rights conferred by
Subject to the
other provisions of this Act, the registration of a trade mark in Part A or
Part B of the register 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.
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.
Where two or
more persons are registered proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive right to the use of any of
those trade marks 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
29 provides for the consequences of infringement of trade marks in the
"Infringement of registered
trade mark is infringed by a person who, not being a registered proprietor of
the trade mark or a registered use thereof using by way of permitted use, uses
in the course of trade mark which is identical with, or deceptively similar to,
the trade mark in relation to any goods 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 an action for
infringement of a trade mark registered in Part B of the register an injunction
or other relief shall not be granted to the plaintiff if the defendant
establishes to the satisfaction of the court that the use of the mark of which
the plaintiff complains is not likely to deceive or cause confusion or to be
taken as indicating a connection in the course of trade between the goods in
respect of which the trade mark is registered and some person having the right,
either as registered proprietor or as registered user, to use the trade
mark." Section 33 provides for saving of vested rights.
OF MOU, for the purpose of these appeals, may be treated to be a family
settlement. It is, however, well-known that intention of the parties to an
instrument must be gathered from the terms thereof examined in the light of the
surrounding circumstances. [See Sohan Lal Naraindas v. Laxmidas Raghunath
Gadit, (1971) 1 SCC 276] In Delta International Ltd. v. Shyam Sundar
Ganeriwalla [(1999) 4 SCC 545], this Court noticed:
"For construction of contracts
between the parties and for the interpretation of such document, learned Senior
Counsel, Mr Desai has rightly relied upon some paragraphs from The
Interpretation of Contracts by Kim Lewison, Q.C. as under:
"For the purpose
of the construction of contracts, the intention of the parties is the meaning of
the words they have used. There is no intention independent of that meaning.
Where the words
of a contract are capable of two meanings, one of which is lawful and the other
unlawful, the former construction should be preferred.
Edward Coke [Co. Litt. 42a] expressed the proposition thus:
a general rule, that whensoever the words of a deed, or of one of the parties
without deed, may have a double intendment and the one standeth with law and
right, and the other is wrongful and against law, the intendment that standeth
with law shall be taken.'" It is further stated:
that purpose, he referred to the following observations of Buckley, J. from the
paragraphs which are sought to be relied upon from The Interpretation of
Contracts by Kim Lewison, Q.C.:
first duty is to construe the contract, and for the purpose of arriving at the
true construction of the contract, I must disregard what would be the legal
consequences of construing it one way or the other way."" Moreover,
the document is to be read as a whole. It is equally well settled that the deed
has to be construed keeping in view the existing law.
now a well-settled principle of law that a document must be construed having
regard to the terms and conditions as well as the nature thereof. [Union of India v. M/s.
Millenium Mumbai Broadcast Pvt. Ltd. 2006 (5) SCALE 44] MOU We may proceed on
the basis that the MOU answers the principles of family settlement having
regard to the fact that the same was actuated by a desire to resolve the
disputes and the courts would not easily disturb them as has been held in S.
Shanmugam Pillai and Others v. K. Shanmugam Pillai and Others [(1973) 2 SCC
312], Kale and Others v. Deputy Director of Consolidation and Others [(1976) 3
SCC 119] and Hari Shankar Singhania & Ors. v. Gaur Hari Singhania &
Ors. [JT 2006 (4) SC 251].
at one point of time the appellant-Company had taken a stand that it being not
a party to the MOU, it is not bound by the terms thereof but the same would not
mean that in an action for infringement of trade mark, when the MOU was put as
a shield to its claim, it could not have taken recourse to proper
interpretation thereof for the purpose of determination of the rights of the
parties to use the trade mark in question.
not a case where the courts refused to lean in favour of family arrangement or
base its decision on technical or trivial ground. We have been taken through
the MOU again and again. It fell for judicial interpretation. Interpretation
processes were undertaken by the Courts below. The same would also be reviewed
by us hereafter.
OF The appellant before us is a Company registered and incorporated under the Companies
Act. Indisputably, the parties to the MOU being Arvindbhai, Hasmukhbhai and
Pravinbhai were its Directors. They are all brothers. All the shares of the Company
were held by them and their family members. The Company although is a juristic
person was not made a party thereto. The effect of the Company being not a
party may have to be considered by the Trial Court in the suit; but, as the
parties for the purpose of disposal of this appeal proceeded on the basis that
the MOU was entered into by and between the parties thereto; an endeavour shall
be made to construe the same as it stands. We would, however, like to observe
that in the event any other attending circumstances are brought on record by
way of adduction of oral evidences, if permissible in law, warranting a
different interpretation of the said MOU, the learned Trial Judge would be at
liberty to do so. We may furthermore place on record that we are construing the
said MOU only for the purpose of disposal of an interlocutory matter which
would not, thus, be binding on the courts below at the final hearing of the
broad propositions which are evident from a perusal of the said MOU appear to
be as under:
all the three brothers, Arvindbhai who was the eldest among them is on one side
and Hasmukhbhai and Pravinbhai are on the other. The division of the assets is
broadly arrived at in that proportion. The Counsel appearing before us
proceeded on the basis that MOU for all intent and purport was a family
settlement. Disputes and differences having arisen between the parties, the
said MOU was entered into with a view to resolve the same as regards the
business and property held by them so as to enable them to be in peace, harmony
and understanding in the family. The said settlement was arrived at through the
mechanism of mediation of the well- wishers of the family. MOU was, thus,
entered into for the purpose of distribution of the properties and business and
the same was given effect to on and from 1.4.1998. It stipulates:
and selling of masala (spices) and instant mix was being done by the Company.
The goods used
to be manufactured in a factory situated in village Sola. Another factory was
constructed on block No. 527, 542 and 528 at Changodar. The Joint family, viz.,
the Partnership (Ramdev Masala) had been selling goods in retail in the name of
'Ramdev Masala' to seven outlets named therein.
business in respect of goods, viz., pepper-spices, instant mix, groceries and
other articles was being done in the name of Ramdev Exports.
Trade Mark or trade name which was registered in the name of the company, viz.,
Ramdev and its logo of a saint astride on a horse with a standard went to the
Company. The expression "Ramdev" is written in the Gujarati language
just above the said logo and the word "masala" which is again in the
Gujarati language appears just below the same.
became the exclusive owner of the business Ramdev Exports (Partnership Firm)
and Ramdev Masala (another Partnership Firm).
contained a clarification to the effect that the other two brothers, viz.,
Hasmukhbhai and Pravinbhai became the owners thereof and would carry on the
management of the business of the Company. The two brothers, Hasmukhbhai and
Pravinbhai were given the right to carry on export business under the brand
name of 'Ramdev' but in a manner which would not cause any loss to Arvindbhai
or vice-versa. Whereas the land situated at Sola went to Arvindbhai along with
the building, the machineries belonging to the company remained with the
Company. The new factory and machinery also went to the Company. A right of
pre-emption in respect of the trade mark Ramdev was also created in terms
whereof Hasmukhbhai and Pravinbhai was to offer sale of the said trade mark to
Arvindbhai in the event they intend to do so. It was, thus, made clear that the
manufacturing activities were to be restricted to the Company through
Hasmukhbhai and Pravinbhai.
two brothers, viz., Hasmukhbhai and Pravinbhai, also had the right to carry out
export business under the brand name of Ramdev but in a manner which would not
cause any loss to the eldest brother or vice-versa.
have noticed hereinbefore that the partnership Ramdev Masala had an user
agreement for seven years from 1.4.1991 which lapsed on 31.3.1998. MOU came
into force with effect from 1.4.1998. By reason of the said MOU prima facie
Arvindbhai had not been given any manufacturing right through the user
agreement. The trade mark Ramdev, thus, belonged exclusively to the Company.
several trade marks were registered and belonged to the Company, we are
primarily concerned with the trade mark bearing No. 447700 having the
the learned Trial Judge as also the High Court proceeded on the basis that in
terms of the said MOU, the Company acquired an exclusive right to use the same.
not in dispute that the respondents have been manufacturing spices under and
name and style of 'Swad'. The said mark is a registered one.
Courts below proceeded on the basis that the mark used by the respondents are
deceptively similar to the trade mark registered in favour of the appellant.
There is no dispute in regard to the said findings. We would hereinafter
consider the effect thereof.
concept of trade mark dates back to ancient times. Even in the Harappan
Civilization marks of trade with foreign countries such as Mesopotamia and Babylonia were found embossed on articles. The law of trade marks was
formalised with the process of registration which gave exclusivity to a trader
right to deal in goods using a symbol or mark of some sort to distinguish his
goods from similar goods sold by other traders.
today the grant of a trade mark is an indicator of exclusivity in trade under
that mark and this right cannot be transferred. Only a limited right of user
can be granted via licence.
Modern Law of Trade Marks by Christopher Morcom, Butterworths 1999, it is
concept of distinguishing goods or services of the proprietor from those of
others was to be found in the requirements for a mark to be registrable.
Essentially, whatever the wording used, a trade mark or a service mark was an
indication which enabled the goods or services from a particular source to be
indentified and thus distinguished from goods or services from other sources.
In adopting a definition of 'trade mark' which simply describes the function in
terms of capability of 'distinguishing the goods or services of one undertaking
from those of other undertakings' the new law is really saying precisely the
same thing." In Gujarat Bottling Co. Ltd. and Others v. Coca Cola Co. and
Others [(1995) 5 SCC 545], it was held that licensing of trade mark is governed
by common law which is also statutorily permissible provided:
licensing does not result in causing confusion or deception among the public;
it does not
destroy the distinctiveness of the trade mark, that is to say, the trade mark,
before the public eye, continues to distinguish the goods connected with the
proprietor of the mark from those connected with others; and
a connection in
the course of trade consistent with the definition of trade mark continues to
exist between the goods and the proprietor of the mark"
use of another's trade mark is not only a violation of business ethics but has
also been linked to dishonestly making use of the goodwill and reputation built
up and associated with the mark.
Laxmikant V. Patel v. Chetanbhai Shah and Another [(2002) 3 SCC 65], it was
"A person may sell his goods or
deliver his services such as in case of a profession under a trading name or
style. With the lapse of time such business or services associated with a
person acquire a reputation or goodwill which becomes a property which is
protected by courts. A competitor initiating sale of goods or services in the
same name or by imitating that name results in injury to the business of one
who has the property in that name. The law does not permit any one to carry on
his business in such a way as would persuade the customers or clients in
believing that the goods or services belonging to someone else are his or are
associated therewith. It does not matter whether the latter person does so
fraudulently or otherwise. The reasons are two.
honesty and fair play are, and ought to be, the basic policies in the world of
when a person adopts or intends to adopt a name in connection with his business
or services which already belongs to someone else it results in confusion and
has propensity of diverting the customers and clients of someone else to
himself and thereby resulting in injury."
OF TRADE MARK
trade mark is the property of the manufacturer. The purpose of a trade mark is
to establish a connection between the goods and the source thereof which would
suggest the quality of goods. If the trade mark is registered, indisputably the
user thereof by a person who is not otherwise authorised to do so would
constitute infringement. Section 21 of the 1958 Act provides that where an
application for registration is filed, the same can be opposed. Ordinarily
under the law and, as noticed hereinbefore, there can only be one mark, one
source or one proprietor. Ordinarily again right to user of a trade mark cannot
have two origins. The first respondent herein is a rival trader of the
appellant-Company. It did not in law have any right to use the said trade mark,
save and except by reason of the terms contained in the MOU or continuous user.
It is well-settled that when defences in regard to right of user are set up,
the onus would be on the person who has taken the said plea. It is equally
well-settled that a person cannot use a mark which would be deceptively similar
to that of the registered trade mark. Registration of trade marks is envisaged
to remove any confusion in the minds of the consumers. If, thus, goods are sold
which are produced from two sources, the same may lead to confusion in the mind
of the consumers. In a given situation, it may also amount to fraud on the
proprietor of a registered trade mark indisputably has a statutory right
thereto. In the event of such use by any person other than the person in whose
name the trade mark is registered, he will have a statutory remedy in terms of
Section 21 of the 1958 Act. Ordinarily, therefore, two people are not entitled
to the same trade mark, unless there exists an express licence in that behalf.
FUNCTIONS OF A TRADE MARK
now note a few precedents on the function of a trade mark.
Sumat Prasad Jain v. Sheojanam Prasad (Dead) and Others and State of Bihar [(1973) 1 SCC 56], this Court held:
the distinction between a trade mark and a property mark is that whereas the
former denotes the manufacture or quality of the goods to which it is attached,
the latter denotes the ownership in them. In other words, a trade mark concerns
the goods themselves, while a property mark concerns the proprietor. A property
mark attached to the movable property of a person remains even if part of such
property goes out of his hands and ceases to be his." In Canon Kabushiki
Kaisha v. Metro-Goldwyn-Mayer Inc. [(1999) RPC 117], the European Court of Justice
emphasised the test of likelihood of confusion in the following terms:
"That view is also confirmed by
the judgment of the court in SABEL, in which it held that the "likelihood
of confusion mustbe appreciated globally, taking into account all factors relevant
to the circumstances of the case" (at paragraph 22).
true that that statement was made in a different context: the court was there
considering the question whether conceptual similarity of the marks alone could
give rise to confusion within the meaning of Article 4(1)(b), in a situation in
which the goods in question were clearly the same.
the statement is one of general application." In Baker Hughes Limited v.
Hiroo Khushalani [1998 PTC (18) 580], the question as regards likelihood of confusion
even by the enlightened public was noticed in the following words :
in Grotrian, Helfferich, Schulz, Th. Sons, a corporation, 365 F.Supp. 707
(1973), striking a similar note the Court held as under:
argues that purchaser will not be confused because of the degree of their
sophistication and the price (B & L Sales supra, 421 F.2d at 354). It is
true that deliberate buyers of expensive pianos are not as vulnerable to
confusion as to products as hasty buyers of inexpensive merchandise at a
newsstand or drug store [Callmann, Unfair Competition Trademarks and
Monopolies, (3d ed. 1971)]. The sophistication of buyers, however, does not
always assure the absence of confusion Comcet, Inc., 429 F.2d at 1252]. It is
the subliminal confusion apparent in the record as to the relationship, past
and present, between the corporate entities and the products that can transcend
the competence of even the most sophisticated consumer.
into an initial interest, a potential Steinway buyer may satisfy himself that
the less expensive Grotrian-Steinweg is at least as good, if not better, than a
and confusion thus work to appropriate defendant's good will. This confusion,
or mistaken beliefs as to the companies' interrelationships, can destroy the
value of the trademark which is intended to point to only one company [American
Drill Busing Co. v. Rockwell Mfg. Co., 342 F.2d 1922, 52 CCPA 1173 (1965)].
Thus, the mere fact that purchasers may be sophisticated or discriminating is not
sufficient to preclude the likelihood of confusion. "Being skilled in
their own art does not necessarily preclude their mistaking one trademark for
another when the marks are as similar as those here in issue, and cover
merchandise in the same general field" [Id].
regard to the above discussion prima facie I am of the opinion that the word
Baker occurring in the corporate name of the second defendant suggests its
connection or nexus with 'Baker', which depicts a wrong picture as from
February, 1995 'Baker' has terminated its relation with the defendants. The
continuance of the word Baker as part of the corporate name of the second
defendant is likely to cause deception and confusion in the mind of the
customers. There would be no justification for the second defendant to use the
word Baker as part of its corporate name after the ties between the first
plaintiff and the second defendant have ceased to exist." The said
decision has been noticed by this Court in Baker Hughes Ltd. and Another v. Hiroo
Khushlani and Another [(2004) 12 SCC 628].
Milmet Oftho Industries and Others v. Allergan Inc. [(2004) 12 SCC 624], in
regard to medicinal products, this Court opined:
considering the possibility of likelihood of deception or confusion, in present
times and particularly in the field of medicine, the courts must also keep in
mind the fact that nowadays the field of medicine is of an international
court has to keep in mind the possibility that with the passage of time, some
conflict may occur between the use of the mark by the applicant in India and the user by the overseas
company. The court must ensure that public interest is in no way imperilled"
We may in this connection notice a recent judgment of the European Court of
Justice in Canon Kabushiki Kaisha (supra) wherein it was opined:
"That case concerned the
interpretation of Article 4(1)(b) of the Directive in so far as it refers to
"a likelihood of confusion on the part of the public, which includes the
likelihood of association with the earlier trade mark". The court
explained that it had been submitted that "the likelihood of association
may arise in three sets of circumstances:
where the public
confuses the sign and the mark in question (likelihood of direct confusion);
where the public
makes a connection between the proprietors of the sign and those of the mark
and confuses them (likelihood of indirect confusion or association);
where the public
considers the sign to be similar to the mark and perception of the sign calls
to mind the memory of the mark, although the two are not confused (likelihood
of association in the strict sense). (Paragraph 16 of the judgment).
The court stated that it was
therefore necessary to determine "whether Article 4(1)(b) can apply where
there is no likelihood of direct or indirect confusion, but only a likelihood
of association in the strict sense" (paragraph 17 of the judgment). It
concluded: "The terms of the provision itself exclude its application
where there is no likelihood of confusion on the part of the public".
(paragraph 18 of the judgment). Thus, the court held that "the mere
association which the public might make between two trade marks as a result of
their analogous semantic content is not in itself a sufficient ground for concluding
that there is a likelihood of confusion" within the meaning of Article
MARK AND GOODWILL
a trade mark has always been considered a vital and inseparable part of the
goodwill of the business. In fact, the sale of a trade mark without the sale of
the goodwill to the same buyer is considered null and void. However, the trade
mark can be assigned with or without the goodwill of business though subject to
certain conditions. [See V.A. Mohta's Trade Marks, Passing Off and Franchising,
pages 12, 313.]
contention of the appellant before the Courts below was that its right to the
said trade mark has been entrenched by the respondents on account of use of the
same as part of the trade name in view of the fact that although it has started
the business in the trade name 'Swad', the first respondent, on the label and
the packing material of the said product, had printed the name of the
manufacturer 'Ramdev Masala' in such a prominent manner that the same would
create an impression in the mind of the ordinary unwary customer that the same
is a product of the appellant Company. It also alleged that the respondents had
adopted advertisements, marketed and displayed boards in such a manner so as to
deliberately deceive the customer.
concurrent finding of fact arrived at by both the courts was that the packing
material and wrapper of both the parties was phonetically and visibly similar
to the registered mark. The packing material and label used by the respondents
were deceptively similar to that of the appellant and the same creates
deception as well as confusion in the minds of customers who are literate,
illiterate, male or female, who used to purchase in retail market from small
shops as well as big departmental stores.
learned Trial Court as also the High Court proceeded on the basis that the
respondents are entitled to use the said trade mark by reason of the
stipulations contained in the said MOU as a result whereof they became entitled
to use the trade mark Ramdev for their retail business of spices in seven
outlets, which used to be belonging to the company. The said outlets were meant
to be used for retail sale of the products of the appellant alone.
learned Trial Judge as also the High Court, however, failed to notice two
significant and important provisions in the said MOU, viz.,
could not carry on business in wholesale of the said products;
it was meant to
be sold directly to the consumers and on the productions "not for resale"
was required to be printed on each packet.
therefore, could be done by the respondents was to sell the products of the
appellant through the said outlets. It was one of the primary business of the
partnership firm which was given to the first respondent. Prima facie,
therefore, the first respondent could sell only the product of the appellant.
The respondents, however, were not restrained from manufacturing spices in
their own factory. They were entitled to do so.
started the same under the brand name of 'Swad'. They could even use the same
retail outlets for the purpose of promoting their own products but prima facie
they could not use the mark registered in the name of the appellant Company.
The registration number of trade mark is 447700.
the appellant had acquired goodwill and reputation thereto, in the event of any
infringement to the said right, the remedies provided for in the 1958 Act would
be available to it. The terms of the MOU, in our opinion, are clear and
unambiguous. It was required to be construed, even if it was obscure to some
extent by making attempt to uphold the one which would be in consonance with
law and not offend the same. Quality control by a registered trade holder
vis-`-vis the one produced by an unregistered one is one of the factors which
is required to be taken into consideration for the purpose of passing an order
of injunction. It is one thing to say that the respondents were permitted to
carry on trade but it would be another thing say that they would be entitled to
manufacture and market its products under a name which would be deceptively
similar to that of the registered trade mark of the appellant. So long the
parties to an arrangement can continue to carry out their respective businesses
without infringing the right of another, indisputably the terms thereof must be
given effect to. But the matter would be entirely different when a party who
has not been expressly authorised to manufacture the goods in which the Company
had been carrying on business under the same name, the respondents under law
could not have been permitted to carry on the manufacturing and marketing of
their products under the same name. In a case of this nature, even a mandatory
injunction can be granted. The respondents in the instant case have adopted a
part of the appellant's registered trade mark as a part of its corporate name.
They had merely been permitted to trade from seven outlets. In that view of the
matter, they had a limited right under the MOU and by reason thereof they could
not have been permitted to start manufacturing of spices under the name and
style of 'Ramdev Masala'.
under the common law, licence has to be interpreted to subsume the law and
prevent the mischief which is deceptive having regard to the fact that
trafficking in trade mark is not permitted.
true that the respondents have been permitted in terms of the MOU to continue
their business in the name of the partnership firm and to use the label mark,
logo, etc. but the said MOU must be construed in the light of the law operating
in the field. For the said purpose, prima facie, the deeds of retirement are
not required to be looked into. When a right to use a trade mark is given, such
a right can be exercised only in the manner laid down therein. If in absence of
any express licence or agreement to use its label the respondents use the
self-same trade mark, the same would not only lead to confusion but may also
cause deception. Even a common law licence, it is well-settled, cannot result
in the dilution of the trade mark.
that view of the matter, we are not in a position to subscribe to the views of
the learned Trial Judge and the High Court that although the first respondent
would be at liberty to carry on the business of manufacture of spices, it can
use the mark 'Ramdev' only in seven outlets. It evidently in view of the legal
position, could do so in respect of the products of the appellant alone, which
would be evident from the fact that at the relevant point of time, the
respondents were not carrying any such business. The direction of the learned
Trial Judge that the respondents should be prevented from using the word
"Ramdev Masala" and their label and packing, however, has been
over-turned by the High Court on the premise that they are required to observe
the statutory requirements under the Prevention of Food Adulteration Act, 1955
as also the Standards of Weights and Measures Act, 1976.
non-obstante nature of a provision although may be of wide amplitude, the
interpretative process thereof must be kept confined to the legislative policy.
A non-obstante clause must be given effect to, to the extent the Parliament
intended and not beyond the same. [See ICICI Bank Ltd. v. Sidco Leathers Ltd.
& Ors., 2006 (5) SCALE 27] The question which also escaped the attention of
the High Court was that having regard to the non-obstante clause contained in
the 1958 Act ordinarily for any purpose, the trade mark cannot be infringed. If
an infringement of trade mark is established, the onus would be on the
defendants to show that he is entitled thereto either by reason of acquiescence
on the part of the owner of the registered trade mark or he himself has
acquired a right thereto. The Provisions of the Standards of Weights and Measures
Act or the Prevention of Food Adulteration Act do not confer such right. Yet
again, significantly, a pre-emptive right had been conferred in favour of the
first respondent which is itself suggestive of the fact that the first
respondent admitted and acknowledged the right of the appellant to the said
MOU, furthermore it was categorically stated that the use of the trade mark was
only to the extent of retail sale as on the packages, the words "not for
resale" were to be printed. If the parties intended to allow the first
respondent herein to manufacture his own products and to market the same by
using the name of Ramdev Masala, the question of grant of a right to sell only
in retail and that also printing the words 'not for resale' would not have
arisen. A manufacturer is not only entitled to sell his own products in retail
but also in wholesale. It can use any outlet for the said purpose whether
belonging to it or any other. It would lead to an anomaly if it be held that
the first respondent would be permitted not only to sell the products of the
appellant but also its own products under the same trade name albeit only from
the seven outlets.
reason of the said MOU, the respondents are not bound to buy any product from
the appellant but there is an obligation on the part of the appellant to supply
the same as otherwise it would lead to closure of business of Arvindbhai which
would have been the intention of the parties.
the parties had settled their disputes, it was expected that the outlets would
be utilised for the purposes for which they were meant to be utilised.
were the mutual obligations of the parties is a matter which can be considered
only at the trial or in any other appropriate proceeding, but prima facie it
goes without saying that the first respondent, in any event, was entitled to
sell also his own products from the said outlets. The parties for the said
purpose thought of remaining mutually dependent as it was stipulated that while
also competing with each other they would see to it that by action of one, the
other is not harmed at least while exporting the materials. It is, thus, not a
case where the appellant having taken advantage of the terms of the MOU had
resiled therefrom and in that view of the matter the principle of estoppel
cannot be said to have any application in the instant case.
also not in a position to accept the submission of Mr. Nariman that the MOU
must be read with the deed of partnership or the deeds of retirement whereby
and whereunder the firm 'Ramdev Masala' and 'Ramdev Exports' were permitted to
use the word 'Ramdev'.
is registered is a logo wherein the words 'Ramdev' and 'Masala' are prominent.
A person may be held to be permitted to carry on business in spices as contradistinguished
from the permission to carry on manufacturing goods which are similar to that
of the appellant, but in terms of the statutory provisions, the respondents
were not legally permitted to sell its products in packages or labels which
would be deceptively similar to that of the registered owner of a trade mark.
The right to manufacture masala and to sell the same with the registered logo,
it will bear repetition to state, was assigned as far back in 1991. If the
contention of the Senior Counsel is accepted, the said purpose would be lost.
In a case of this nature, therefore, ordinarily an injunction would issue.
reason of interpretation of MOU, trade mark cannot be infringed and further
when the right of user has been relinquished, the same could not have been
claimed by the respondents.
matter may be considered from another angle. If the first respondent has
expressly waived his right on the trade mark registered in the name of the
appellant-Company, could he claim the said right indirectly? The answer to the
said question must be rendered in the negative. It is well-settled that what
cannot be done directly cannot be done indirectly.
term 'Waiver' has been described in the following words:
is the abandonment of a right in such a way that the other party is entitled to
plead the abandonment by way of confession and avoidance if the right is
thereafter asserted, and is either express or implied from conductA person who
is entitled to rely on a stipulation, existing for his benefit alone, in a
contract or of a statutory provision may waive it, and allow the contract or
transaction to proceed as though the stipulation or provision did not exist.
Waiver of this kind depends upon consent, and the fact that the other party has
acted upon it is sufficient consideration It seems that, in general, where one
party has, by his words or conduct, made to the other a promise or assurance
which was intended to affect the legal relations between them and to be acted
on accordingly, then, once the other party has taken him at his word and acted
on it, so as to alter his position, the party who gave the promise or assurance
cannot afterwards be allowed to revert to the previous legal relationship as if
no such promise or assurance had been made by him, but he must accept their
legal relations subject to the qualification which he has himself so
introduced, even though it is not supported in point of law by any
16 Halsbury's Laws (4th edn) para 1471] Waiver may sometimes resemble a form of
election, and sometimes be based on ordinary principles of estoppel. [See 45
Halsbury's Laws (4th edn.) para 1269] In Indu Shekhar Singh & Ors. v. State
of U.P. & Ors. [2006 (5) SCALE 107],
this Court held:
therefore, exercised their right of option.
they obtained entry on the basis of election, they cannot be allowed to turn
round and contend that the conditions are illegal"
15 AND 17 ISSUE
15 of the 1958 Act postulates registration of the whole and a part thereof as
separate trade marks. The nature of the trade mark of the appellant has been
are three elements in the said trade mark, viz., 'Ramdev', 'Masala' and the
'horse'. The deception could be as regard the prominent features of the said
15 of the 1958 Act, in our considered opinion, is not attracted in the instant
case. By reason of the said provision, registration of trade mark in regard to
the exclusive use is permissible both in respect of the whole trade mark as
also the part thereof separately. Where such separate trade mark in regard to a
part of it is applied for, the applicant must satisfy the conditions applying
to and have all the incidents of an independent trade mark. Sub-section (3) of
Section 15 of the 1958 Act provides for a case where the proprietor of several
trade marks claimed registration in respect of the same goods or description of
the goods which while resembling each other in the material particulars thereof
yet differ in respect of the matters provided for therein. We are not, in this
case, concerned with such a legal question.
Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr.
Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was
claimed that the mark 'Shree' was a trade mark apart from the device as a whole
and it was an important feature of its device.
respondents were carrying on business in the name and style of Shree Durga
Charan Rakshit. It was in the peculiar factual background obtaining therein,
this Court, referred to the decision of Lord Esher in Pinto v. Badman [8 RPC
181] to say that where a distinctive label is registered as a whole such
registration cannot possibly give any exclusive statutory right to the
proprietor of the trade mark to the use of any particular word or name
contained therein apart from the mark as a whole. This Court in the
aforementioned factual backdrop opined:
as we have already stated, is not quite correct, for apart from the practice
the Registrar did advert to the other important consideration, namely, that on
the evidence before him and the statement of counsel it was quite clear that
the reason for resisting the disclaimer in this particular case was that the
Company thought, erroneously no doubt but quite seriously, that the
registration of the trade mark as a whole would, in the circumstances of this
case, give it a right to the exclusive use of the word "Shree" as if
separately and by itself it was also its registered trade mark and that it
would be easier for it to be successful in an infringement action than in a
passing off action.
precisely the possibility of such an extravagant and untenable claim that
called for a disclaimer for the purpose of defining the rights of the
respondent company under the registration" (Emphasis supplied) The said
decision has no application to the fact of this case.
Nariman is also not correct in contending that only a label has been registered
and not the name 'Ramdev'. Definition of 'mark' as contained in Section 2(j) of
the 1958 Act also includes name, signature, etc.
28 of the 1958 Act confers the right of registration whereas Section 29 thereof
provides for the remedies for infringement of trade mark. What is needed by way
of cause of action for filing a suit of infringement of trade mark is use of a
deceptively similar mark which may not be identical. What would be deceptively
similar, as defined in Section 2(d) of the 1958 Act, would be a mark if it
nearly resembles that other mark as to be likely to deceive or cause confusion.
It is, therefore, not a case where the respondents could raise valid defence in
terms of Section 29 of the 1958 Act.
right conferred in terms of Section 28 of the 1958 Act although is required to
be read with Sections 15 and 17 thereof but it is difficult to accept that each
part of the logo was required to be separately registered.
28 of the 1958 Act confers an exclusive right of using trade mark to a person
who has got the trade mark registered in his name. Such right is, thus,
absolute. Sub-section (3) of Section 28 raises a legal fiction for the purposes
specified therein but we are not concerned therewith in the instant case.
Sub-section (2) of Section 29 inter alia provides for the defences.
not in this case go into the question as to whether it was essential having
regard to the provisions contained in the MOU that the user agreement should
have been registered in terms of Section 49 of the 1958 Act as was opined by
the High Court. But, we have no doubt in our mind that the user agreement
having come to an end on 31st March, 1998, i.e., on the expiry of seven years
from the date of execution, the respondents could no more claim any right thereunder.
The user agreement was valid from 01.04.1991 to 31.03.1998. The MOU came into
force from 1.4.1998. The right to user has not been conveyed by reason of the
said MOU. The cut off date for determining the respective rights of the parties
would, thus, be 1.4.1998. Submission of the learned counsel that the MOU for
the purpose of Section 28 of the 1958 Act should be read with the partnership
deed is not acceptable to us. In fact, the respondents have consciously
relinquished their right, if any.
not a case where Sections 48 and 49 of the 1958 Act would be applicable so as
to enable the respondents to raise a defence in terms of Section 30(1)(b)
also not a case where non-registration of MOU as was the case in Amteshwar
Anand v. Virender Mohan Singh and Others [(2006) 1 SCC 148] was taken as a
shield to defeat the purpose of the agreements entered into by and between the
parties. In that case, however, what was contended was that the agreement
required registration in terms of Section 17(1) of the Registration Act whereas
the High Court had found that the user agreement was not registered in terms of
Section 49 of the Act holding:
Composition Deed in this case was a transaction between the members of the same
family for the mutual benefit of such members. It is not the appellants' case
that the agreements required registration under any other Act. Apart from this,
there is the principle that Courts lean in favour of upholding a family
arrangement instead of disturbing the same on technical or trivial grounds
particularly when the parties' have mutually received benefits under the
the courts below had concurrently found that the parties had enjoyed material
benefits under the agreements. We have ourselves also re-scrutinized the
evidence on record on this aspect and have found nothing to persuade us to take
a contrary view. Furthermore, in this case the agreements had merged in the
decree of the Court which is also excepted under Sub-section 2(vi) of Section
17 of the Registration Act, 1908" In re Cadbury Brothers' Application
(supra), it is stated:
seems to me manifest that the registration of this trade mark cannot give rise
to any rights except a right to the mark as a whole. It cannot give any
statutory rights at all in respect of the word "Tudor"; and, that
being so, it is inexpedient to place on the register an unnecessary disclaimer,
because the effect of so doing is to unsettle the law and give rise to doubts
in other cases, where such disclaimers are not inserted" For the self-same
reason, this decision is also not applicable.
OF PASSING OFF ACTION
case of this nature, the test for determination of the dispute would be the
same where a cause of action for passing off arises. The deceptively similar
test, thus, would be applicable herein.
doctrine of passing off is a common law remedy whereby a person is prevented
from trying to wrongfully utilise the reputation and goodwill of another by
trying to deceive the public through 'passing off' his goods.
Kerly's Law of Trade Marks and Trade Names' Supplement pages 42 and 43,
paragraph 16-02, the concept of passing off is stated as under:
law of passing-off can be summarised in one short general proposition no man
may pass off his goods as those of another. More specifically, it may be
expressed in terms of the elements which the plaintiff in such an action has to
prove in order to succeed. These are three in number.
he must establish a goodwill or reputation attached to the goods or services
which he supplies in the mind of the purchasing public by association with the
identifying 'get-up' (whether it consists simply of a brand name or a trade
descrip- tion,or the individual features of labelling or packaging) under which
his particular goods or services are offered to the public, such that the
get-up is recognised by the public as distinctive specifically of the
plaintiff's goods or services.
he must demonstrate a misrepresentation by the defendant to the public (whether
or not intentional) leading or likely to lead the public to belief that the
goods or services offered by him are the goods or services of the plaintiff.
he must demonstrate that he suffers or, in a quick time action, that he is
likely to suffer damage by reason of the erroneous belief engendered by the
defendant's misrepresentation that the source of the defendant's goods or
service is the same as the source of those offered by the plaintiff..."
OFF - INFRINGEMENT
the defendant may not be using the actual trade mark of the plaintiff, the get
up of the defendant's goods may be so much like the plaintiff's that a clear
case of passing off could be proved. It is also possible that the defendant may
be using the plaintiff's mark, the get up of the defendant's goods may be so
different from the get up of the plaintiff's goods and the prices also may be
so different that there would be no probability of deception of the public.
However, in an infringement action, an injunction would be issued if it is
proved that the defendant is improperly using the plaintiff's mark. In an
action for infringement where the defendant's trade mark is identical with the
plaintiff's mark, the Court will not enquire whether the infringement is such as
is likely to deceive or cause confusion. The test, therefore, is as to
likelihood of confusion or deception arising from similarity of marks is the
same both in infringement and passing off actions. [See Ruston & Hornsby
Ltd. v. The Zamindara Engineering Co., (1969) 2 SCC 727] In Parle Products (P)
Ltd. v. J.P. and Co., Mysore [(1972) 1 SCC 618], emphasis was
laid on the broad and essential features of the impugned mark holding:
would be enough if the impugned mark bears such an overall similarity to the
registered mark as would be likely to mislead a person usually dealing with one
to accept the other if offered to him" Noticing the similarity of the mark
in question with that of the impugned mark, it was opined that "if one was
not careful enough to note the peculiar features of the wrapper on the
plaintiffs' goods, he might easily mistake the defendants' wrapper for the
plaintiffs' if shown to him some time after he had seen the plaintiffs'".
all, an ordinary purchaser is not gifted with the powers of observation of a
Sherlock Homes. We have therefore no doubt that the defendants' wrapper is
deceptively similar to the plaintiffs' which was registered. We do not think it
necessary to refer to the decisions referred to at the bar as in our view each
case will have to be judged on its own features and it would be of no use to
note on how many points there was similarity and in how many others there was
absence of it." In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical
Laboratories [AIR 1965 SC 980], this Court held:
matters which are of the essence of the cause of action for relief on the
ground of passing off play but a limited role in an action for infringement of
a registered trade mark by the registered proprietor who has a statutory right
to that mark and who has a statutory remedy for the event of the use by another
of that mark or a colourable imitation thereof. While an action for passing off
is a Common Law remedy being in substance an action for deceit, that is, a
passing off by a person of his own goods as those of another, that is not the
gist of an action for infringement.
action for infringement is a statutory remedy conferred on the registered
proprietor of a registered trade mark for the vindication of the exclusive
right to the use of the trade mark in relation to those goods" (Vide
Section 21 of the Act). The use by the defendant of the trade mark of the
plaintiff is not essential in an action for passing off, but is the sine qua
non in the case of an action for infringement. No doubt, where the evidence in
respect of passing off consists merely of the colourable use of a registered
trade mark, the essential features of both the actions might coincide in the
sense that what would be a colourable imitation of a trade mark in a passing
off action would also be such in an action for infringement of the same trade
mark In Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. and another [AIR
1993 Bombay 237], Srikrishna, J., as His Lordship then was, repelled the
contention that any trader who exclusively sells the goods bearing a registered
trade mark, has a right to adopt a trade name which could include the said
trade mark and that such adoption would not amount to infringement or passing
Rahimtoola was not able to cite any authority for the proposition propounded,
which I find somewhat startling. The consequences of accepting this proposition
would mean that the registered proprietor would be at the mercy of anyone who
sells the goods bearing his trade mark.
situation like the present, where the businesses are overlapping, the trade
channels are almost identical and the family background is conspicuous, I am of
the view that there would be an inherent likelihood of confusion in the minds
of the public that not only that the goods, which emanate from the first
defendants, are "Bedrock" goods, but also further that the first
defendants' business is somehow intimately connected with the plaintiffs', either
as a branch, agency or otherwise.
is also the danger, as rightly emphasized by the plaintiffs, that any act or
omission of the first defendants would have deleierious repercussion on the
credit, reputation and goodwill of the plaintiffs themselves. For example, if
the first defendants were to commit an act of insolvency or do any act which
tarnishes their reputation in the market, there is imminent likelihood of
people jumping into the confused conclusion that the plaintiffs had committed
an act of insolvency or that they had done something objectionable. I am,
therefore, unable to accept the contention of the first defendant that, by
their purportedly selling exclusively "Bedrock" goods, they are
entitled to adopt the word "Bedrock" as a part of their company name
or trading style. That they have done so is not really disputed. In my view,
therefore, there is both infringement and passing off action, prima
facie." De Cordova and Others v. Vick Chemical Co. [1951 (68) RPC 103] is
nearer the issue involved herein as in that case the registered trade mark
consisting of the word 'Vaporub' and another registered trade mark consisting
of a design of which the words 'Vicks Vaporub Salve' formed a part. The
defendants in the suit advertised their ointment as 'Karsote Vapour Rub'. It
was held that the defendants had infringed the registered trade mark.
said decision was quoted with approval by this Court in K.R. Chinna Krishna
Chettiar v. Shri Ambal and Co., Madras and Another [1969 (2) SCC 131] wherein the question was whether the
word 'Ambal' resembles the sound of the word 'Andal'. It was held to be so upon
rejecting an argument advanced on behalf of the defendant that the same had
distinct meanings stating:
Hindus in the south of India may be well aware that the words
Ambal and Andal represent the names of two distinct Goddesses. But the
respondent's customers are not confined to Hindus alone. Many of their
customers are Christians, Parsees, Muslims and persons of other religious
denominations. Moreover, their business is not confined to south of India. The customers who are not Hindus
or who do not belong to the south of India may not know the difference between the words Andal and Ambal. The
words have no direct reference to the character and quality of snuff. The
customers who use the respondent's goods will have a recollection that they are
known by the word Ambal. They may also have a vague recollection of the
portrait of a benign goddess used in connection with the mark. They are not
likely to remember the fine distinctions between a Vaishnavite goddess and a
Shivaite deity" We may not lose sight of the fact that the mark was
assigned in favour of the Company as far back in the year 1992. The mark did
not come to the company through MOU or otherwise.
plea of acquiescence on the part of the appellant herein has been raised on two
appellant permitted the respondents to carry on business in the trade name of
It is, thus,
also not entitled to an order of injunction.
appellant by a registered notice dated 12/15-12-1998 asked the defendant Nos. 1
and 7 that the firm 'Ramdev Masala' had been unauthorisedly using the
appellant-company registered trade mark in respect of its product sold and
manufactured by them and on the packing materials, labels, boxes, poly pouches.
They were called upon to restrain from doing so with immediate effect and
destroy the necessary label/ packets of packing materials failing which it was
threatened that a legal action would be taken.
determining the said issues, we may notice the following facts.
civil suit was filed by the first respondent in the Ahmedabad City Civil Court wherein a prayer was made that the
deed of assignment be declared null and void and the appellant herein be
permanently restrained from using the same as also for a declaration that they
are the owners of the said trade mark/trade name. However, an interim order as
prayed for therein was not granted. A First Information Report was also lodged
against the respondents by the appellant-Company before the Madhupura Police
Station for commission of an alleged offence under Section 63 of the Copyright
Act and Sections 78 and 79 of the 1958 Act as well as Sections 417, 420, 419
and 486 of the Indian Penal Code. An application for quashing the said
complaint was filed before the Gujarat High Court on 4.8.1999. It was dismissed
by an order dated 26.10.1999. A Special Leave Petition preferred thereagainst
being SLP (Crl.) No. 3900 of 1999 was also dismissed by this Court by an order
dated 14.12.1999. In the meanwhile, a rectification application was filed by
the respondents before the Registrar of Trade Mark, Mumbai allegedly stating
that the registered trade mark bearing No. 447700 was not being used by the
plaintiff, it was not entitled to continue to claim title thereover or use the
same. Various applications were moreover filed by the respondents herein for
rectification of the entry in the register in respect of various label marks of
the appellant. The appellant thereafter issued a public notice on 17.12.1999
calling upon the respondents to restrain themselves from infringing upon the
trade mark of the appellant, in respect whereto a public notice was also issued
by the respondents herein on 21.12.1999. The suit thereafter was filed on
10.2.2000. Contention of the respondents in this behalf was that not only in
terms of the MOU the appellant had been allowed to carry on business under the
name and style of 'Ramdev Masala', no immediate step having been taken after
issuance of the public notice dated 15.12.1998 for long time, they were not
entitled to obtain an order of injunction. Delay in some cases may defeat
equity but the chronology of events noticed hereinbefore do not suggest that the
appellant's consciously allowed the respondents to use the trade mark.
is a facet of delay. The principle of acquiescence would apply where:
sitting by or
allow another to invade the rights and spending money on it;
it is a course
of conduct inconsistent with the claim for exclusive rights for trade mark,
trade name, etc.
M/s. Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd. [(1994) 2
SCC 448], this Court stated:
is sitting by, when another is invading the rights and spending money on it. It
is a course of conduct inconsistent with the claim for exclusive rights in a
trade mark, trade name etc. It implies positive acts; not merely silence or
inaction such as is involved in laches" In an infringement of trade mark,
delay by itself may not be a ground for refusing to issue injunction as has
been observed by Lahoti, J. (as His Lordship then was) in Midas Hygiene
Industries (P) Ltd. v. Sudhir Bhatia and Others [(2004) 3 SCC 90] in the
law on the subject is well settled. In cases of infringement either of trade
mark or of copyright, normally an 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 mark was itself dishonest." (Emphasis supplied) The
defence of acquiescence, thus, would be satisfied when the plaintiff assents to
or lay by in relation to the acts of another person and in view of that assent
or laying by and consequent acts it would be unjust in all the circumstances to
grant the specific relief.
in his "Treatise on the Law and Practice of Injunction", Sixth
Edition at pages 360-361 states as under:
delay after knowledge of the infringement to take proceedings, not sufficient
to call the Statute of Limitations into operation, or where the infringement
continues, is not, it seems, a bar to the right of an injunction at the trial.
Lapse of time unaccompanied by anything else is, it seems, no more a bar to a
suit for an injunction in aid of the legal right than it is to an action
delay may cause the Court to refuse an interlocutory injunction, especially if
the defendant has built up a trade in which he has notoriously used the mark"
Specific knowledge on the part of the plaintiff and prejudice suffered by the
defendant is also a relevant factor. [See Spry on Equitable Remedies, Fourth
Edition, page 433] Applying the aforementioned principles in the instant case,
it is evident that the time gap between the issuance of the notice and filing
of an application for grant of injunction was not a voluntary act on the part
of the appellant herein. It had to wait for the outcome of various proceedings
pending before different courts. The respondents having themselves taking
recourse to judicial proceedings, as noticed hereinbefore, cannot now be
permitted to set up the defence of acquiescence on the part of the appellant.
in a case of infringement of trade mark, injunction would ordinarily follow
where it is established that the defendant had infringed the trade mark and had
not been able to discharge its burden as regard the defence taken by it.
Pioneer Electronic Corporation and Another v. Registrar of Trade Marks [(1978)
RPC 716], an Australian
Court referring to a
large number of decisions observed:
cases demonstrate that the essential requirement for the maintenance of the
validity of a trade mark is that it must indicate a connection in the course of
trade with the registered proprietor, even though the connection may be slight,
such as selection or quality control or control of the user in the sense in
which a parent company controls a subsidiary. Use by either the registered proprietor
or a licensee (whether registered or otherwise) will protect the mark from
attack on the ground of non- user, but it is essential both that the user
maintains the connection of the registered proprietor with the goods and that
the use of the mark does not become otherwise deceptive. Conversely,
registration of a registered user will not save the mark if there ceases to be
the relevant connection in the course of trade with the proprietor or the mark
otherwise becomes deceptive." [See also Holly Hobbie Trade Mark, (1984)
although beyond any doubt or dispute that the defendant had been manufacturing
and selling its products; what is sought to be injuncted is using a label which
is deceptively similar to that of the plaintiff.
attention has been drawn to the right of the parties of the second and third
part of the MOU to carry out export business in the brand name of 'Ramdev'
which, in our opinion, does not advance their case as by reason thereof, the
appellant-Company had been also conferred right to carry on the export business
in the name of 'Ramdev'.
also not correct that having regard to the fact that the property situated at
Sola having been given in favour of the respondents, they have acquired a vested
right in the trade mark as has been urged before us or otherwise. Respondents
did not have any right over the trade mark. They in fact, it will bear
repetition to state, assigned the same in favour of the appellant-Company. They
have assigned the said trade mark and having relinquished their right,
Respondents, thus, now cannot fall back on Section 33 of the 1958 Act. It may
be true that there exists a distinction between a suit in a trade mark action
against the whole world and a suit for implementation of division of assets
amongst the members of the family.
after the MOU was entered into the parties having separated ceased to be
members of a joint family. What was, thus, essential for determining the right
of the parties would be the terms of the MOU.
of a trade mark and user thereof per se may lead to the conclusion that the
plaintiff has a prima facie case, however, existence thereof would also depend
upon the determination of the defences raised on behalf of the respondents. The
appellant has raised a triable issue. The same by itself although may not be
sufficient to establish a prima facie case but in view of our findings
aforementioned, we are satisfied that the appellant has been able to establish
existence of a legal right in itself and violation of the registered trade mark
on the part of the respondents. We have also considered the comparable strength
of the cases of the parties and are of the opinion that the case of the
plaintiff-appellant stands on a better footing than the defendants-respondents.
question as regards the matter relating to grant of injunction has been dealt
in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. [(2000) 5 SCC 573] wherein upon
noticing a large number of decisions including Colgate Palmolive (India) Ltd.
v. Hindustan Lever Ltd. [(1999) 7 SCC 1] as also the subsequent distinction
made in respect of the decision of the House of Lords in American Cyanamid v.
Ethicon Ltd. [(1975) 1 All ER 853], it was stated :
in trademark matters, it is now necessary to go into the question of
"comparable strength" of the cases of either party, apart from
balance of convenience.
M/s. Transmission Corporation of A.P., Ltd. v. M/s. Lanco Kondapalli Power Pvt.
Ltd. [JT 2005 (10) SC 542], it was held :
interim direction ordinarily would precede finding of a prima facie case. When
existence of a prima facie case is established, the court shall consider the
other relevant factors, namely, balance of convenience and irreparable
injuries. The High Court in its impugned judgment although not directly but
indirectly has considered this aspect of the matter when on merit it noticed
that the Appellant has raised a dispute as regard payment of an excess amount
of Rs.35 crores although according to the Respondent a sum of Rs.132 crores is
due to it from the Appellant and the Appellant had been paying the amount for
the last two years as per the contract.
of the parties is also a relevant factor. If the parties had been acting in a
particular manner for a long time upon interpreting the terms and conditions of
the contract, if pending determination of the lis, an order is passed that the
parties would continue to do so, the same would not render the decision as an
arbitrary one, as was contended by Mr. Rao. Even the Appellant had prayed for
adjudication at the hands of the Commission in the same manner. Thus, it itself
thought that the final relief would be granted only by the Arbitrator." We
also do not appreciate the conduct of the respondents. They were aware of the
rights under the MOU. They had all along been enforcing the same. Legal defence
were available to them under the 1958 Act.
they filed a suit to scuttle the intended action on the part of the respondents
pursuant to the public notice dated 15.12.1998.
P.M. Diesels Ltd. v. Patel Field Marshal Agencies & Others [2001 PTC 20
(Del)], the High Court noticed the distinction between logo, trade mark and
trade name and was of the view that the defendants cannot be permitted to use
the trade name so as to defeat the other portion of the order of injunction
already passed against him. An injunction can also be granted against the
respondents to use the corporate name.
by way of interlocutory injunction would be material in a suit for infringement
of trade mark. Balance of convenience, however, would have a vital role to
not oblivious of the fact that respondents have been manufacturing and carrying
on business in the sale of spices under the name 'Ramdev Masala' even during
pendency of the suit. The learned Trial Judge had made an attempt to strike the
balance. The High Court, however, had overturned a part of it having regard to
the statutory interdict contained in the Rules made under the Prevention of
Food Adulteration Act and Standards of Weights and Measures Act.
Law of Trade Marks and Trade Names, Thirteenth Edition states as under about
the general test for grant of an interim injunction:
trade-mark infringement cases irreparable damage, in this sense, is relatively
easily shown, since infringement may easily destroy the value of a mark or at
least nullify expensive advertising in a way that is hard to quantify for the
purposes of an inquiry into damages. This has more recently come to be referred
to, in cases where the defendant's conduct is not directly damaging but merely
reduces the distinctive character of the claimant's mark, as
particular, although it is usually neither necessary nor appropriate to assess
the degree of probability of success which the claimant's action has (provided
that it is arguable, and subject to the principle of American Cyanamid that the
merits may be resorted to as a 'tie-breaker' if the balance of convenience is
very even,) in trade mark and passing off cases, it is very hard to avoid doing
so, since the better the claimant's case on the likelihood of deception
(frequently the major issue) the greater the harm which he is likely to suffer.
Accordingly, in appropriate cases, where the state of the evidence permits it,
the court may seek to weigh up the merits in deciding whether to grant interim
relief." Thus, when a prima facie case is made out and balance of
convenience is in favour of the appellant, it may not be necessary to show more
than loss of goodwill and reputation to fulfil the condition of irreparable
injury. In fact, if the first two pre-requisites are fulfilled, in trade mark
actions irreparable loss can be presumed to have taken place.
expression "irreparable injury" in that sense would have established
injury which the plaintiff is likely to suffer.
Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd.
[(2002) 2 SCC 147], this Court observed:
"The Bombay High Court in the
case of Kirloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd.
considered the scope of granting injunction in a suit for infringement of a
trade mark under Section 106 of the Act by the use of the mark
principle of balance of convenience applies when the scales are evenly balanced.
The existence of the 1st appellant in each appeal is very recent whereas the
existence of the respondents belonging to 'Kirloskar Group of Companies' has
been for over a period of 50 years. On their own showing, the appellants are
not using the word 'Kirloskar' as trade mark but as part of trading style
whereas the respondents have not only acquired distinctiveness and goodwill in
the word 'Kirloskar' but it is even the registered trade mark of the 1st
is sufficient evidence on record to show that the huge business is carried by
'Kirloskar Group of Companies'.
is nothing on record to show the extent of the business of the appellants. The
2nd appellant has throughout been aware about the business reputation of the
respondents and efforts of the respondents in protecting their rights in the
trade marks as also of preventing others to use the word 'Kirloskar' as a part
of the trading name or trading style. By grant of the interim injunction in
favour of the respondents, the appellants are not prevented from carrying on
business without the word 'Kirloskar' forming part of the corporate name of the
1st appellant in each appeal. In the facts of the case, the respondents'
reputation is likely to be adversely affected if the appellants are not
prevented from using name of the 1st appellant in each appeal. In the facts of
the case, the balance of convenience is not in favour of the appellants.
The real question in each case is whether there is as a result of
misrepresentation a real likelihood of confusion or deception of the public and
consequent damage to the plaintiff. The focus is shifted from the external
objective test of making comparison of activities of parties to the state of
mind of public in deciding whether it will be confused. With the passage of
time and reputation acquired, the trade mark 'Kirloskar' has acquired the
secondary meaning and has become almost a household word. The judgments relied
upon by Mr Kane pertain to the cases of one type of business and not where variety
of businesses have been carried by the plaintiff and the defendant as in the
instant case. The business activities of the respondents vary from pin to piano
as borne out from the object clauses of the memorandums of association of the
respondents. The appellants have still to commence their business activities
but as mentioned in the memorandums of association of the 1st appellant in each
appeal, some of the object clauses therein overlap with the activities of
respondents and more particularly of Respondents 6 and 7."
COURT'S JURISDICTION TO INTERFERE WITH
ORDERS OF THE TRIAL JUDGE
not oblivious that normally the appellate court would be slow to interfere with
the discretionary jurisdiction of the trial court.
grant of an interlocutory injunction is in exercise of discretionary power and
hence, the appellate courts will usually not interfere with it. However,
appellate courts will substitute their discretion if they find that discretion
has been exercised arbitrarily, capriciously, perversely, or where the court
has ignored settled principles of law regulating the grant or refusal of
interlocutory injunctions. This principle has been stated by this court time
and time again. [See for example Wander Ltd. v. Antox India P. Ltd (1990) Supp
SCC 727, Lakshmikant V. Patel v. ChetanBhai Shah (2002) 3 SCC 65 and Seema
Arshad Zaheer v. MC of Greater Mumbai (2006) 5 SCALE 263] The appellate court
may not reassess the material and seek to reach a conclusion different from the
one reached by the court blow if the one reached by that court was reasonably
possible on the material. The appellate court would normally not be justified
in interfering with the exercise of discretion under appeal solely on the
ground that if it had considered the matter at the trial stage it would have
come to a contrary conclusion.
in this case the courts below proceeded on a prima facie misconstruction of
documents. They adopted and applied wrong standards. We, therefore, are of the
opinion that a case for interference has been made out.
findings aforementioned, it goes without saying, are prima facie in nature. We
place on record that Mr. Nariman contended that there is evidence to show the
contrary intention of the parties in respect whereof a large number of
documents are available. Evidently respondents may prove. No such document is,
however, before us. If the respondents, at the trial, could bring the same on
record, evidently the court would be entitled to draw its own inference.
have differed with the findings of the courts below primarily on the
interpretation of the MOU. In that view of the matter, we are of the opinion
that in this case this Court would be justified to interfere with the said
findings. We are, however, not oblivious of the damages which may have to be
suffered by respondents herein in the event the suit of the appellant is to be
ultimately dismissed. We intend to protect the same also.
the said purpose, we would take into consideration the terms of the injunction
granted by the Trial Judge that the respondents were entitled to sell their
products in the name of M/s. Ram Dev Masala only from the seven outlets. The
modification made by the High Court has already been noticed by us.
view of our findings aforementioned, direct:
be restrained from using the trade mark including the trade name 'Ramdev
Masala' in any of their products.
however, carry on their business in any other name insofar as manufacturing of
spices is concerned.
shall, as and when demands are made, supply spices produced by it for retail
sale thereof to seven outlets belonging to respondents on usual terms, and in
respect of such articles on the labels/pouches, on the reverse thereof, the
following shall be mentioned in the minimum permissible size in terms of the
provisions of Weights and Measures Act and Prevention of Food Adulteration Act:
product is manufactured and marketed by M/s. Ramdev Masala (Arvindbhai Group)
(Or M/s. Ramdev Exports Arvindbhai Group) having no relationship whatsoever
with Ramdev Food Products Pvt. Ltd."
shall deposit a sum of Rs. 50 lakhs before the Trial Court or furnish a bank
guarantee for the said sum by way of security.
applications for rectification before the Registrar of Trade Marks, the final
hearing of Civil Suit No. 828 of 2000 shall be expedited and the learned Trial
Judge is hereby directed to complete the hearing as expeditiously as possible
preferably within a period of six months from the date of communication of this
the reasons aforementioned, these appeals are allowed. The respondents shall
pay and bear the costs of the appellant of these appeals.
fee assessed at Rs. 25,000/-.