Bombay High Court
Occupation-Service vs A Registered Private Limited ... on 13 December, 2013
Bench: Anoop V. Mohta
1 AO.280-2013
Dond
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
CIVIL APPELLATE JURISDICTION
APPEAL FROM ORDER NO. 280 OF 2013
WITH
CIVIL APPLICATION NO. 337 OF 2013
Prakash Agro Industries Ltd.
A Company incorporated and registered
under the provisioni of Companies Act
1956 through its authorized person
Mr. Prakash Motilal Dhoka, age-62 years
Occupation-Service, having its registered
Office at Parakh House, 1 Market Yard
Pune-411 037. ..Appellant.
(Original-Plaintiff )
Vs.
S.R.K. Products Pvt. Ltd.
A registered Private Limited Company
Having Office at 228 & 233, 11th Main
2nd Cross Road, 3rd Phase, Peenya,
Bangalore-560 058. ..Respondent
(Original-Defendant)
------
Dr. V.V. Tulzapurkar Sr. Advocate a/w Mr. Sandeep Parikh
Mr. H.J. Engineer i/b M/s Gordhandas & Fozdar for Appellant.
Mr. A.A. Valsangkar a/w Mr S.A. Kumbhakoni for Respondent.
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2 AO.280-2013
Coram : Anoop V. Mohta, J.
Closed for Judgment On : 27 November 2013.
Judgment Pronounced On: 13 December 2013.
JUDGMENT:
1 The Appellant-Original Plaintiff has challenged order
dated 15 December 2012 passed by the learned District Judge, Pune
whereby dismissed the application for injunction restraining the
Respondent-Defendant from infringing the Appellant's registered
trade mark "SAMRAT". The dispute is therefore with regard to the
word-mark "SAMRAT".
2 The Appellant is a Company engaged in carrying
business of manufacturing, distribution and marketing Besan, Pulses,
Wheat, Flour and preparations made from Cereals, Rava, Maida, Atta
and other products in the trade since 1983. They got registered trade
mark "SAMRAT" in relation to the said goods in class 30 under the
Trade Marks Act, 1999 (for short "the Act"). They made an
application for renewal with new identity and label with distinct
features of food products and a device of a lady in the year 2007.
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The Appellant is also holder and registered proprietor of the original
artistic work under the mark "SAMRAT" under the Copyright Act,
1957.
3 The Respondent-Defendant has started selling atta under
the mark "SAMRAT" which according to the Appellant, is
phonetically, structurally and visually identical to their registered
mark with device. The Respondent-Defendant, inspite of a caution
and restrain notice and requests to refrain and stop selling atta, has
denied falsely. Therefore, the Appellant filed the suit in September
2012, as it also violates the provisions of Section 9(2) and 11(1) of
the Act.
4 The Appellant in April 2012 noted again such products in
the market in the name of "SAMRAT" and therefore filed the suit and
also prayed for mandatory injunction. The Respondent-Defendant
denied and resisted every aspect of the averments and the case so
sought to be submitted by the Appellant. The Defendant-Company,
basically doing business in South India and also resisted that the
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4 AO.280-2013
Appellant failed to aver and produce the documents to show the
Appellant's ownership of any common rights for such reliefs. The
denial is also made by the Respondent that the packing and artistic
work used in their product is similar and that the Respondent has
been continuously using a trade mark "SAMRAT" with device of a
crown with unique get-up and packaging. Both these are part of
record as filed by both the parties in support of their respective
cases.
5 The Respective-Defendant contended that they are doing
this business since 1993 by manufacturing and marketing of arappu
powder, turmeric powder, chilli powder, dhania powder etc. and
their turnover is more that two crores per annum and they have also
spent huge amount towards advertisement. They denied any
similarity phonetically, structurally and visually with regard to the
alleged trade mark.
6 After hearing both the parties and considering both the
labels-trade marks, I am also inclined to hold that the marks are
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quite different and both these marks are not structurally similar
either phonetically or even visually. There is no question of any
confusion of the mind of relevant customers. The delay and latches
on the part of the Appellant, apart from the acquiescence and long
use of the mark by the Respondent-Defendant also cannot be
overlooked at this stage.
The basic registered trade mark of the Appellant is of
crown with device having words "Swadist and Ruchkar
Padarthasathi "Samrat" brand Chana Besan". The Appellant in 2007
applied for new identity and label with distinct features of food
products and a device of a lady which consists and contains the word
"SAMRAT". However, the same was approved under the Registered
Copyright Act and not under the Trade Marks Act. Therefore,
apparently the trade mark issue artistic work but under Class 30 of
the Act. The original trade mark produced on record, as recorded as
"Crown" with device having the words in question. The copyright,
even if any, of artistic work with picture of a lady admittedly issued
on 4.1.2011 as applied on 14.11.2009, but this means it was not
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since 1983. The copyright issue of wrapper therefore Cannon be
treated as trade mark.
8 The Respondent, on the contrary, produced on record
their trade mark of word "SAMRAT" with device of crown. But later
on the device of crown was disclaimed under the trade mark
"SAMRAT" for class 30 in respect of coffee only is not in dispute. On
the wrapper, the Respondent-Defendant used their trade mark for
products namely cereal, wheat, atta. The Appellant was not using his
original trade mark of the year 1983. The Appellant's trade mark was
not used by the Respondent-Defendant on its products. Therefore,
there is no question of confusion and/or deception, as sought to be
contended.
9 The learned Judge has given clear finding that the trade
mark of the Appellant is of king with device of crown with
vernacular word which is similar and/or identical with the
trademark of the Respondent-Defendant, namely the word
"SAMRAT" with device of crown. Therefore, the learned Judge
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observed that no prima facie material in support of the Appellant.
The learned Judge has observed that both the parties are using the
mark "SAMRAT" in their packaging. However, the style of writing the
word "SAMRAT" is different. The word "SAMRAT" is commonly used
as common name and no one can have trade mark for the same. The
word "SAMRAT" therefore is common name known as "king". The
Appellant had the trade marl of vernacular word "SAMRAT" and
therefore there is no case of infringement.
10 The learned Judge has also observed, after considering
the material on record there is no prima facie material to show that
the Plaintiff was using mark "SAMRAT" atta prior to Defendant. The
Defendant using the trade mark "SAMRAT" with device of crown
since 1995 though it was for coffee, but using the word "SAMRAT"
since 1997, is certainly after the registration of the Appellant's
product in 2011. There is no similarity of any kind. There is no case
of deception and/or confusion, specifically when the word
"SAMRAT" is common name.
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11 Therefore, in the present facts and circumstances of the
case, no case is made out as even the pouches of atta so placed on
record, the same are of different colours and combination and there
is no similarity and/or any identity. The name of the manufacturer is
written in bold. The aspect of spoken word "SAMRAT" as
contemplated under Section 28 read with Section 29 and also in the
present facts and circumstances, is not sufficient to consider the case
of the Appellant at this stage of the proceedings.
12 No case of perversity and illegality. The order is well
within law and the record. Suit expedited.
13 For the above reasons, the Appeal from Order is
dismissed, so also Civil Application. No costs.
(ANOOP V. MOHTA, J.)
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