Bdg Metal And Power Limited vs Shree Ramdoot Rollers Private ...
2023 Latest Caselaw 1598 Cal/2

ORDER SHEET

                                                                                 OCD-7

                    IN THE HIGH COURT AT CALCUTTA
                  ORDINARY ORIGINAL CIVIL JURISDICTION
                         [COMMERCIAL DIVISION]


                          IA No. GA/1/2023
                                  In
                            CS/115/2023
                    BDG METAL AND POWER LIMITED
                               VERSUS
                SHREE RAMDOOT ROLLERS PRIVATE LIMITED


  BEFORE:
  The Hon'ble JUSTICE ARINDAM MUKHERJEE
  Date: 17th July, 2023.
                                                                             Appearance:
                                                          Mr. S. N. Mookherjee, Sr. Adv.
                                                         Mr. Ranjan Bachawat, Sr. Adv.
                                                              Mr. Debnath Ghosh, Adv.
                                                            Ms. Suchismita Ghosh, Adv.
                                                               Mr. Shounak Mitra, Adv.
                                                               Ms. Shivangi Thard, Adv.
                                                       Mr. Shubrojyoti Mookherjee, Adv.
                                                            Mr. Aakash Mukherjee, Adv.
                                                             For the plaintiff/petitioner.

                                                            Mr. Jayanta Mitra, Sr. Adv.
                                                                Mr. Utpal Bose, Sr. Adv.
                                                              Mr. Debjyoti Manna, Adv.
                                                         For the defendant/respondent.

The Court:- The suit is for passing off action. In this application, the

plaintiff/petitioner is seeking temporary injunction and an ad interim order in

terms thereof. It is the case of the plaintiff/petitioner that amongst other the

plaintiff/petitioner is engaged in manufacture and sell of TMT Bars. The TMT Bar

sold by the plaintiff/petitioner under the trademarks "LOTUS" (word per se) and

"LOTUS POWER OF NATION" (word per se).

The plaintiff/petitioner says that the plaintiff/petitioner is in the

manufacture and trade of TMT Bar, which is sold under the mark "LOTUS

POWER OF NATION" since 2014. The plaintiff/petitioner has relied upon the

sales figures for the financial years between 2014-2015 and 2022-2023 (un-

audited) as certified by their Chartered Accountant to show the volume of trade

during this time. The sales figures are provided in paragraph 7 of the petition and

certificate issued by the Chartered Accountant is at pages 284 and 285 of the

petition.

The plaintiff/petitioner further says that the gradual increase in

sales of TMT Bar which is sold under the mark "LOTUS POWER OF NATION" is

evident from the sales figures between 2014-2015 and 2022-2023.

The plaintiff/petitioner also says that they have made substantial

expenditure for advertisement purpose to develop a market wherein the

plaintiff's/petitioner's product is identified by the mark "LOTUS POWER OF

NATION". The plaintiff has applied for registration of such mark on 9 th July, 2019

for goods and services under Class-VI as enumerated under the Trade Mark Act,

1999, wherein the user date has been clearly stated to be 1 st January, 2014. The

plaintiff's/petitioner's application for registration is at page 236. This application

has, however, been opposed and as such, the registration is still pending.

The plaintiff/petitioner further alleges that the

defendant/respondent on 23rd February, 2023 has made an application for

registering a trade mark "SRD LOTUS" for goods and services under Class-VI. In

the said application, a copy whereof is annexed at page 346, the defendant has

categorically stated that the mark is proposed to be used. This clearly indicates,

according to the defendant that there was no sell of TMT bar under the said mark

by the defendant till the date of application.

The plaintiff/petitioner also says that on a comparison of the mark

under which the plaintiff/petitioner sells its goods with that by which the

defendant/respondent intends to sell the identical goods, the same are

deceptively similar which is likely to confuse a customer who intends to purchase

TMT Bars. This in all likelihood will amount to selling of the

defendant's/respondent's product as if the same is that of the plaintiff/petitioner,

if not prevented as the defendant did not stop despite receipt of the cease and

desist notice dated 29th March, 2023.

The plaintiff further says that test as required to establish a passing

off action is evident from the fact that the plaintiff is a prior user and has

developed a substantial volume of business by selling TMT Bars under the trade

mark "LOTUS POWER OF NATION" and that the mark applied for by the

defendant/respondent for sale of TMT Bars is also deceptively similar. The

defendant/respondent, therefore, should be injuncted from selling its products

under the trade mark "SRD LOTUS" in any manner whatsoever. The plaintiff has

relied upon a judgment reported in (2016) 2 SCC 683 (S. Syed Mohideen-

Versus- P. Sulochana Bai) , a Division Bench judgment of this Court passed in

FMAT 293 of 2022 (Bardhaman Agro Products (I) Pvt. Ltd.-Versus-South

Damodar Agro Products & Ors.) and a Supreme Court order dated 30 th

September, 2013 passed in M/s. MAC Charles (I) Ltd.-Versus- M/s. Indian

Performing Rights Society Ltd.), in support of its contention.

The defendant/respondent on the other hand says that the

defendant/respondent was in the business of manufacture and sell of TMT Bars

for a considerable period of time and had been selling its products under

different marks much prior to 2014 and has been able to develop a market in

respect of TMT Bar. The defendant/respondent was advised to apply for

registration of a mark "SRD LOTUS" for which such application was made in

February, 2023. 'SRD', according to the defendant/respondent, are the initial

letters of their company name Shree Ramdoot. Lotus as a flower is associated

with the worship of Gods Shiva and Ram which has been clearly spelt and in the

reply to the case and desist notice given on 12 th April, 2023. Lotus, according to

the defendant/respondent, is generic name and no one can or could have a mark

on a generic name. The defendant/respondent then refers to an affidavit filed by

the plaintiff/petitioner before the trade mark registry when the registration of

plaintiff's/petitioner's trade mark "LOTUS POWER OF NATION" was opposed by

some other entity. By referring to the affidavit, the defendant/respondent says

that the plaintiff/petitioner itself has admitted that "LOTUS" is a generic name

and there are innumerable users in the trade for various items/articles with the

name "LOTUS".

The defendant/respondent further says that the own admission of

the plaintiff/petitioner clearly demonstrates that the plaintiff/petitioner also

knows and accepts "LOTUS" to be a generic name. The goods which are sold by

the defendant/respondent are identified in the market as "SRD LOTUS" while

that of the plaintiff/petitioner by the mark "LOTUS POWER OF NATION". Thus,

there can be no confusion amongst the customers, since the same are not

deceptively similar. The defendant/respondent has also referred to the mark of

the plaintiff/petitioner sought to be registered as appears in page 31 of the

application with the mark applied by the defendant/respondent for registration

which is at page 346 to demonstrate the difference.

The defendant/respondent also says that the font, the colour

combination and the layout in the two marks at pages 31 and 346 will show that

they are not similar or deceptively similar to confuse an ordinary customer. The

defendant/respondent, therefore, says that even if the plaintiff/petitioner is a

prior user and have had financial figures in support of its sell, then also, by

virtue of the admission in the affidavit referred to hereinabove and that the

defendant/respondent is also in the same trade for a considerable period of time,

the defendant/respondent should be given an opportunity to file affidavit before

any ad interim order of injunction is made. The defendant / respondent also says

that the plaintiff initially tried to run the defendant's business by making

advertisement and publication but the defendant/respondent in selling spurious

TMT bars for which the defendant/respondent had to file a suit and obtained an

injunction therein. Finding that the said strategy will not work, the

plaintiff/petitioner had filed this suit.

In response, the plaintiff/petitioner says that the word "LOTUS"

cannot be a generic name as the defendant/respondent itself has applied for

registration of a mark with the word "LOTUS". The customers look for TMT Bar

sold under the name "LOTUS". The term 'POWER OF NATION' used after the

word "LOTUS" does not create any separate impact on a customer as he/she

looks for TMT Bar sold under the name "LOTUS" which originates from the

plaintiff/petitioner. By virtue of prior user which is supported by the sales figure

the plaintiff/petitioner has established that it has been selling TMT Bar identified

by the word "LOTUS". Although, 'SRD' is used as a prefix to 'LOTUS' by the

defendant/respondent but "SRD" does not identify the defendant's goods by

ignoring the word "LOTUS". The emphasis is always on the word 'LOTUS'. Thus,

the defendant/respondent will be selling its product i.e. TMT Bar as if the same

are that of the plaintiff/petitioner. To show the confusion in the mind of the

customers which is likely to occur, the plaintiff/petitioner has relied upon a

judgment and order of a Division Bench of this Court reported in 2020 SCC

Online Cal 560 (Shailputri Media Private Limited vs. Arg Outlier Media

Asianet New Private Limited)

After hearing the parties and considering the materials on record, I

find that the plaintiff/petitioner has been able to make out a prima facie case by

virtue of being prior user and relying upon the sales figure coupled with the

advertisement expenses. The front, the colour continuation and the lay out of

the two marks as in page 31 and page 346 are not visible in the TMT Bars

produced for visual inspection of the Court. In case of plaintiff's goods only the

imprint "LOTUS POWER OF THE NATION" and in case of the defendant the

words SRD LOTUS are embossed. The distinction is not easily visible. The

customers and public at large will identify the goods by the word "LOTUS". In

such a case the passing off is inevitable. The balance of convenience and

inconvenience is also in favour of the plaintiff as refusal of injunction at this

stage is likely to cause irreparable prejudice and further jeopardy to the

plaintiff's/petitioner's right. The injunction is more so necessary to prevent

multiplicity of judicial proceedings.

Although I am inclined to pass an order of injunction in favour of the

plaintiff restraining the defendant/respondent from selling TMT Bars or any like

product under the mark "SRD LOTUS", yet for the submissions made by the

defendant/respondent that in case the Court is minded to pass an order of

injunction, the defendant/respondent be given an opportunity to change its mark

"SRD LOTUS", I keep the order of injunction in abeyance till 19 th July, 2023.

This matter will appear again on 19th July, 2023 under the heading

"For Orders" when the defendant/respondent shall come with specific instruction

regarding the changes they propose to make regarding their mark "SRD LOTUS".

(ARINDAM MUKHERJEE, J.)

snn