Bardhaman Agro Products (I) Pvt. ... vs South Damodar Agro Products & Ors
2022 Latest Caselaw 6602 Cal

15.09.2022                     IN THE HIGH COURT AT CALCUTTA
                                    Civil Appellate Jurisdiction
Court       : 37                      (Commercial Division).
Item        : CD-04
Matter      : FMAT
                                             -----------

Status : IG Transcriber : nandy FMAT 293 of 2022 with CAN 1 of 2022

Bardhaman Agro Products (I) Pvt. Ltd.

Vs.

South Damodar Agro Products & Ors.

Mr. Debnath Sarkar, Advocate Mr. Tinkari Jana, Advocate Mr. Goutam Kumar Roy, Advocate Mr. Gopal Das, Advocate Mr. Sourav Jana, Advocate ......for the Plaintiff/Appellant Mr. Saptangsu Basu, Senior Advocate Mr. Shivasish Sengupta, Advocate Mr. Balarko Sen, Advocate Ms. Sudeshna Roy Thakur, Advocate Ms. Upasana Das, Advocate ......for the Defendant/Respondent

In a suit primarily based on passing off, the trial Court while disposing of an application for temporary injunction although held the existence of a prima facie case in favour of the plaintiff/appellant but rejected the said application on the ground of delay and lack of primary elements for passing off action.

At the very outset we must record that there is a fallacy in the reasons assigned in the impugned order on the prima facie case having made out by the plaintiff/ appellant. It is undeniable that the suit is based on a passing off and if the prima facie case has been found by the Trial Court to have been made out by the appellant/plaintiff to go for trial, we are unable to comprehend the further observation that the primary

elements for passing off action has not been demonstrated in the injunction application.

Be that as it may, both the Counsel have argued on the interim order pending the instant appeal. The plaintiff/appellant has claimed that they were dealing with the product rice under the mark 'rose' since the year 2001 through partnership firm in the name and style "Bardhaman Agro Products" which was later on converted as a Private Limited Company. The plaintiff/ appellant adopted the said trademark in a composite label consisting of the expression 'rose' and the pictorial device of a 'rose' depicted therein and acquired a reputation in the market as a product of 'rose' brand and is known as the secondary significance in course of trade. The expression 'rose' and the pictorial device became a distinguishing and essential feature of the said label mark which is branded on the package and trade- dress of the plaintiff/ appellant's product and acclaimed high reputation on the quality which would be evident from the turn-over during the relevant period between 2001-2020.

In the month of November 2003, in order to acquire statutory recognition to the exclusive right of the said mark 'rose' in respect of rice, an application was filed on November 17, 2003 for registration of the said mark 'rose' under clause (3) of the Trademark Act and the registration was duly granted on October 17, 2005, which is valid till November 17, 2023 upon the renewal having granted by the competent authority.

Subsequently another mark in the composite level with 'double rose' with a prominent pictorial device of

'two roses' was adopted and an application for registration was filed on June 27, 2019, which was granted later on. The aforesaid products are being sold in the packaging containing an artistic level and the said mark, which are the original artistic work under the Copyright Act, 1957.

The defendant/respondent rather adopted the mark 'SDAP double rose' which is deceptibly similar to the mark 'rose' and started using the same product i.e. the rice. It further appears that the defendants also claimed to have used the said trademark since 2007 and got the registration thereof in the year 2010. Both the plaintiff and defendant have filed an application for cancellation of the respective trademarks before the competent authority which are pending. Precisely for the reason, the suit is filed on a passing off action and not on the infringement of a trademark.

In the backdrop of the aforesaid fact, it is required to recapitulate the propositions underlining the grant of preventive order in a passing off action.

In case of Midas Hygiene Industries (P) Ltd. & Anr. Vs. Sudhir Bhatia & Ors. reported in (2004) 3 SCC 90, the Apex Court has held that injunction must be granted in a case of infringement either for a trademark or for a copyright and the delay in bringing the action shall not be hindered in denying such injunction. It is further held that if it appears to the Court, at least prima facie, that the adoption of the mark was itself dishonest, granting an order of injunction is inevitable.

The aforesaid judgment was rendered in a suit for passing off and for infringement of copyright and, therefore, we are unable to accept the contention of the respondent that the observations made therein is restricted to a case of infringement of trademark or a copyright and cannot apply to a case based on passing off action. Furthermore, the aforesaid contention is not acceptable in view of the decision rendered by the Division Bench of this Court in case of Amar Nath Chakroborty Vs. Dutta Bucket Industries & Ors. reported in (2005) 2 CHN 278 wherein it is held: -

21. Although, Mr. Banerjee appearing on behalf of the respondent assiduously tried to convince us that suit having been filed after a long time there should not be any injunction, we are not at all impressed by such submission. In this connection reference may be made to the decision of the Supreme Court in the case of Midas Hygiene Industries (Put) Ltd. v. Sudhir Bhatia and Ors., , where the Apex Court has held that once allegation of passing offf is established, delay is immaterial for considering the case of injunction. In the case of Power Control Appliances (supra), relied upon by Mr. Banerjee, it was held that acquiescence is one of the defences available under Section 30(1)(b) of the 1958 Act. According to the Apex Court, acquiescence is sitting by, when another is invading right and spending money on it. It implies positive act; not merely silence or inaction as is involved in laches. According to the Supreme Court, the acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in favour of a defendant. In this case, the defendant has not produced any material showing positive act on the part of the plaintiff consenting to grant of licence in favour of the defendant.

In both the above noted reports, the delay cannot be a factor in denying the preventive order in the form of an injunction, but we cannot ignore the subsequent decision of the Supreme Court relied upon by the defendant/respondent delivered in case of Toyoto

Jidosha Kabushiki Kaisha Vs. Prius Auto Industries Ltd. & Ors. reported in (2018) 2 SCC 1. It has been held that the delay in bringing an action may be one of the factors in refusing to pass an order of temporary injunction. In the said case the plaintiff was aware that the defendant therein is trading in the same name yet there was a considerable delay in bringing an action. The said judgment was rendered by Two-Judge Bench and did not notice the Coordinate Bench decision rendered in Midas Hygiene (supra). Apart from the same the facts discerned from the said report is different to the facts of the present case. If the later judgment did not notice the earlier judgment and taken contrary view, it would not be safe to rely upon the said judgment.

In a passing off action, the similarities rather than dissimilarities are required to be taken note of by the Court and while doing so, the phonetic similarity can be ignored. Apart from the same the Court must satisfy its conscience whether the purchaser of an average intelligence would be deceived by the words, colour combination, the shape and other artistic works. The moment it is found that the similarity is prominent and even if there is a minor dissimilarity, the same cannot be a ground for refusing to pass an injunction.

We do not delve to go much deep into the matter at this stage as the Court duly refused to pass an interim order merely on the ground of delay despite having found the existence of a prima facie case and, therefore, we have no hesitation to hold that the delay cannot be a primary factor in refusing the injunction subject, however, to a case where the plaintiff/appellant has acquired the right.

In view of the above, there shall be an interim order restraining the defendant/respondent form selling, marketing, dealing and/or advertising, distributing, exporting the rice under the mark 'double rose' or 'SDAP double rose' for a period of ten weeks from date or until further order, whichever is earlier.

The defendant/respondent are directed to file affidavit-in-opposition to the injunction application within one week after reopening of this Court following long vacation for the year 2022. Reply thereto, if any, be filed within a week thereafter.

The application shall be listed two weeks after reopening of this Court following long vacation for the year 2022 under the heading 'Adjourned Motion'.

(Harish Tandon, J.)

(Prasenjit Biswas, J.)