Calcutta High Court
Srmb Srijan Private Limited vs Mahesh Agarwal & Ors on 27 September, 2024
OCD-3
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
COMMERCIAL DIVISION
IA No. G.A. (Com) 1 of 2024
In
I.P. (COM) No. 17 of 2024
(Old No. CS-COM 707 of 2024)
SRMB SRIJAN PRIVATE LIMITED
-VS-
MAHESH AGARWAL & ORS.
BEFORE:
The Hon'ble JUSTICE KRISHNA RAO
Hearing Concluded On : 06.08.2024
Order On : 27.09.2024
Appearance:
Mr. Debnath Ghosh, Adv.
Mr. Biswaroop Mukherjee, Adv.
Mr. Saptarshi Datta, Adv.
Ms. Srinjita Ghosh, Adv.
Mr. Pourush Kanti Pal, Adv.
Mr. Debdut Hore, Adv.
... For the plaintiff.
Mr. Amarjeet Kumar, Adv.
Mr. Dipankar Majumdar, Adv.
Mr. Sarangam Chakraborty, Adv.
Mr. S. Kang, Adv.
Mr. M. Ogra, Adv.
Mr. Rishi Vohra, Adv.
... For the defendants.
2
ORDER
1. The plaintiff has filed the present application being G.A. (Com) No. 1 of
2024 praying for an interim order. The plaintiff is engaged in the
business of manufacturing, sale and distribution of construction
materials including TMT bars, torkari bars, wires, grilles and other
allied products. The predecessor of the plaintiff was incorporated in the
year 1951.
2. The plaintiff is the registered proprietor of the wordmark "SRMB". The
mark "SRMB" is the principal trademark of the plaintiff and also forms
part of the plaintiff's corporate name. The plaintiff also obtained
registration of the mark "SRMB" in various forms and manner. The
plaintiff has been manufacturing, distributing and selling Thermo
Mechanically Treated bars (Known as TMT bars) with a distinctive "X
Ribs" surface pattern since the year 2001. The X RIBS TMT bars of the
plaintiff have a distinct surface pattern with the letter "X" embossed at
regular intervals over the entire surface and length of the TMT bars.
Each bar has two series of "X" pattern, embossed diametrically opposite
to each other.
3. On 8th November, 2016, the plaintiff has applied for registration of X-
ribs pattern with respect to TMT bars, claiming 'user' since 4th January,
2001. The X ribs 3D device (label) shape mark is subsisting on the
Register. The plaintiff has made expenditure of Rs. 15941.46 lacs for
the purpose of advertising and promotion of the products of the
plaintiff. The total sales figure of the plaintiff for the year 2023-2024 is
approximately Rs. 14583.89 lacs.
4. The plaintiff also sells its TMT bars under the mark "WINGRIP". The
plaintiff has obtained registration of wordmark "WINGRIP" on 2nd
January, 2018. The plaintiff has also obtained device registration of the
mark "WINGRIP" on 2nd January, 2018. The plaintiff has also obtained
registration of 3-Dimensional device of iron bars bearing a distinctive
pattern in which the mark "WINGRIP" is applied.
5. Learned Counsel for the plaintiff submits that in the month of July
2023, the plaintiff came to know that the defendants were selling,
distributing and marketing TMT bars having identical "SRMB",
"WINGRIP" and "X-ribs" mark as that of the plaintiff. Immediately, the
plaintiff has sent a legal notice dated 31st July, 2023 to the defendants
calling upon the defendants to immediately cease and desist from
selling TMT bars and rods manufactured by the plaintiff and other rods
under the SRMB, WINGRIP AND X-ribs marks and trade dress.
6. Mr. Debnath Ghosh, Learned Advocate submits that the defendants
have not lawfully acquired the TMT bars bearing the mark SRMB,
WINGRIP and X-ribs as manufactured by the plaintiff and by reasons
whereof the sale of the impugned goods in the market or otherwise
dealing in the said goods by the defendants result in infringement of
the plaintiff's registered mark SRMB, WINGRIP AND X-ribs.
7. Mr. Ghosh submits that the defendants are not the dealers or
distributors of the plaintiff and the plaintiff has not authorised the
defendants to sell, distribute, market, advertise or otherwise deal with
the TMT bars manufactured by the plaintiff having mark of SRMB,
WINGRIP and X-ribs. He submits that the defendants by purporting to
sell X-ribs TMT bars, are infringing then plaintiff's registered mark
SRMB, WINGRIP and X-ribs trademark. He submits that the manner of
sale of TMT bars by the defendants bearing mark SRMB, WINGRIP and
X-ribs of the plaintiff constitutes an act of passing off and
misrepresentation, resulting in the dilution and tarnishing of the
registered mark of the plaintiff.
8. Mr. Ghosh submits that "X-Ribs" mark / shape on the goods sold by
the defendants is a fraudulent and deceptive imitation of the surface
pattern of the "X-Ribs" TMT bars of the plaintiff, which the plaintiff has
the exclusive right to use. He submits that the plaintiff's "X-Ribs" mark
constitutes a shape trademark in which the plaintiff has prior right
under the common law.
9. During the hearing of the case, the defendants have supplied some
documents to the plaintiff to show that the defendants are purchasing
materials from the dealers of the plaintiff and the defendants are selling
in the open market. He submits that the defendants have also shared
some invoices and e-way bills to show that the defendants have
acquired the products bearing the trademarks of the plaintiff from one
Ms. Dauli Kumari carrying on business in the name and style of
"Mishra Steel" from the front of HP Petrol Pump, Madhopur, Kudhani,
Muzaffarpur, Bihar- 842002 who is the distributor of the TMT bars
having trademark of the plaintiff but as per the distributorship
agreement entered between the plaintiff and Ms. Dauli Kumari, the
place of business of the said dealer would be Muzaffarpur.
10. Mr. Ghosh further submitted that as per the general terms and
conditions between the plaintiff and the dealer/ distributor, the dealer
should not encroach other dealer's or distributor's territory or projects
as per company policies. Mr. Ghosh submitted that Mishra Steel has
distributed the products of the plaintiff to various dealers of the
plaintiff and has generated invoices and e-way bills to that effect and
has submitted to the plaintiff. He submits that the defendants with the
connivance of Mishra Steel have obtained false and fabricated bills
invoices and e-way bills.
11. Per contra Mr. Amarjeet Kumar, Learned Advocate representing the
defendants submit that the plaintiff failed to disclose the fact that the
plaintiff is aware that the defendants have acquired the products from
the plaintiff's own dealers and are selling the same products in the
market without any changes or impairments. The defendants relied
upon Sections 29 and 30 of the Trade Marks Act, 1999 and submit that
Section 30 of the Trade Marks Act, 1999 specifically provides for acts
that do not constitute infringement of a registered trademark under
Section 29 of the Act. He submits that the language used in Section
30(3) read with Section 30(4) clearly indicates that if goods are "lawfully
acquired" by a person for the purpose of resale in the market, and these
goods were already been placed on the market by proprietor or with its
consent, such acts do not constitute infringement.
12. Mr. Kumar submits that the defendants have already placed on record
the invoices through which the defendants have purchased the goods.
He submits that the materials were purchased from "Mishra Steel" and
the plaintiff admits that Mishra Steel is one of the authorised
distributors of the plaintiff.
13. Mr. Kumar relied upon the judgement in the case of Kapil Wadhwa &
Ors. vs. Samsung Electronics Co. Ltd. & Anr. reported in 2012 SCC
OnLine Del 5172 and submitted that where the goods bearing a
registered trade mark are lawfully acquired by a person, the sale of the
goods in the market by that person is not infringement of the trade
mark by reason only for the registered trademark having been assigned
by the registered proprietor by some other person, after the acquisition
of those goods and where the goods bearing a registered trade mark are
put on the market and are lawfully acquired by a person, the sale of the
goods in the market by that person is not infringement of the
trademark by reason only of further sale in the market.
14. Heard the Learned Counsel for the respective parties, perused the
materials on record and the judgment relied by the parties. There is no
dispute that the plaintiff is having the trademark of SRMB, WINGRIP
and X-ribs with respect to TMT bars. The defendants have also
admitted that the defendants are selling TMT bars having mark of
SRMB, WINGRIP and X-ribs. The specific case made out by the
defendants that the defendants have lawfully acquired goods for the
purpose of resale in the market and the defendants have not changed
or impaired the goods. The defendants have relied upon Sections 29
and 30 of the Trade Marks Act, 1999 which reads as follows:
"29. Infringement of registered trade
marks.-- (1) A registered trade mark is infringed
by a person who, not being a registered proprietor
or a person using by way of permitted use, uses in
the course of trade, a mark which is identical with,
or deceptively similar to, the trade mark in relation
to goods or services 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.
(2) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course
of trade, a mark which because of--
(a) its identity with the registered trade mark
and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to the registered trade mark
and the identity or similarity of the goods or
services covered by such registered trade
mark; or
(c) its identity with the registered trade mark
and the identity of the goods or services
covered by such registered trade mark, is
likely to cause confusion on the part of the
public, or which is likely to have an
association with the registered trade mark.
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is likely
to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course
of trade, a mark which--
(a) is identical with or similar to the registered
trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which the
trade mark is registered; and
(c) the registered trade mark has a reputation
in India and the use of the mark without due
cause takes unfair advantage of or is
detrimental to, the distinctive character or
repute of the registered trade mark.
(5) A registered trade mark is infringed by a person
if he uses such registered trade mark, as his trade
name or part of his trade name, or name of his
business concern or part of the name, of his
business concern dealing in goods or services in
respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a
registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them
on the market, or stocks them for those
purposes under the registered trade mark, or
offers or supplies services under the registered
trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business
papers or in advertising.
(7) A registered trade mark is infringed by a person
who applies such registered trade mark to a
material intended to be used for labeling or
packaging goods, as a business paper, or for
advertising goods or services, provided such
person, when he applied the mark, knew or had
reason to believe that the application of the mark
was not duly authorised by the proprietor or a
licensee.
(8) A registered trade mark is infringed by any
advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary
to honest practices in industrial or commercial
matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered
trade mark consist of or include words, the trade
mark may be infringed by the spoken use of those
words as well as by their visual representation and
reference in this section to the use of a mark shall
be construed accordingly.
30. Limits on effect of registered trade
mark.-- (1) Nothing in section 29 shall be
construed as preventing the use of a registered
trade mark by any person for the purposes of
identifying goods or services as those of the
proprietor provided the use--
(a) is in accordance with honest practices in
industrial or commercial matters, and
(b) is not such as to take unfair advantage of
or be detrimental to the distinctive character or
repute of the trade mark.
(2) A registered trade mark is not infringed where--
(a) the use in relation to goods or services
indicates the kind, quality, quantity, intended
purpose, value, geographical origin, the time of
production of goods or of rendering of services
or other characteristics of goods or services;
(b) a trade mark is registered subject to any
conditions or limitations, the use of the trade
mark in any manner in relation to goods to be
sold or otherwise traded in, in any place, or in
relation to goods to be exported to any market
or in relation to services for use or available or
acceptance in any place or country outside
India or in any other circumstances, to which,
having regard to those conditions or
limitations, the registration does not extend;
(c) the use by a person of a trade mark-- (i) in
relation to goods connected in the course of
trade with the proprietor or a registered user
of the trade mark if, as to those goods or a
bulk or which they form part, the registered
proprietor or the registered user conforming to
the permitted use has applied the trade mark
and has not subsequently removed or
obliterated it, or has at any time expressly or
impliedly consented to the use of the trade
mark; or
(ii) in relation to services to which the
proprietor of such mark or of a registered user
conforming to the permitted use has applied
the mark, where the purpose and effect of the
use of the mark is to indicate, in accordance
with the fact, that those services have been
performed by the proprietor or a registered
user of the mark;
(d) the use of a trade mark by a person in
relation to goods adapted to form part of, or to
be accessory to, other goods or services in
relation to which the trade mark has been
used without infringement of the right given by
registration under this Act or might for the time
being be so used, if the use of the trade mark
is reasonably necessary in order to indicate
that the goods or services are so adapted, and
neither the purpose nor the effect of the use of
the trade mark is to indicate, otherwise than
in accordance with the fact, a connection in
the course of trade between any person and
the goods or services, as the case may be;
(e) the use of a registered trade mark, being
one of two or more trademarks registered
under this Act which are identical or nearly
resemble each other, in exercise of the right to
the use of that trade mark given by
registration under this Act.
(3) Where the goods bearing a registered trade
mark are lawfully acquired by a person, the sale of
the goods in the market or otherwise dealing in
those goods by that person or by a person claiming
under or through him is not infringement of a trade
mark by reason only of--
(a) the registered trade mark having been
assigned by the registered proprietor to some
other person, after the acquisition of those
goods; or
(b) the goods having been put on the market
under the registered trade mark by the
proprietor or with his consent.
(4) Sub-section (3) shall not apply where there
exists legitimate reasons for the proprietor to
oppose further dealings in the goods in particular,
where the condition of the goods, has been
changed or impaired after they have been put on
the market."
15. Sub-clause (a) of sub-section (3) of Section 30 of the Trade Marks Act,
1999 deals with a situation where a registered proprietor of a
trademark sells the goods bearing the trademark to a person and
thereafter assigns the registered trademark to another person. The said
another person cannot oppose further dealings in those goods by the
person who has acquired those goods bearing the trademark. The sub-
clause operates in a well-defined territory of its own. The situation
contemplated by sub-clause (b) is the goods having been put on the
market under the registered mark by the proprietor or with his consent
are lawfully acquired by a person and further selling of the said goods
in the market. It is here, where the issue of lawful acquisition of the
goods, when put in the market and further sold in the market arises for
consideration and whatever be the view taken i.e. the market
contemplated being the international market or the domestic market
would not make clause (a) otiose.
16. Where goods bearing a registered trademark are lawfully acquired by a
person, the sale of the goods in the market by that person is not
infringement of the trademark by reason only of the registered
trademark having been assigned by the registered proprietor by some
other persons after the acquisition of those goods. Where goods bearing
a registration are put on the market and are lawfully acquired by a
person, the sale of goods in the market by that person is not
infringement of the trademark by a reason only of further sell in the
market.
17. In the case of Kapil Wadhwa (supra), the Division Bench of the Delhi
High Court held that sub-section (4) of Section 30 the Trade Marks Act,
1999, it would be relevant to note that further dealing in the goods
placed in the market under a trade mark can be opposed where
legitimate reasons exist to oppose further dealing and in particular
where the condition of the goods has been changed or impaired. With
respect to physical condition being changed or impaired, even in the
absence of a statutory provision, the registered proprietor of the trade
mark would have the right to oppose further dealing in those goods
inasmuch as they would be the same goods improperly so-called, or to
put it differently, if a physical condition of the goods is changed, it
would no longer be the same goods. But sub-section (4) of Section 30 is
not restricted to only when the conditions of the goods have been
changed or impaired after they have been put on the market. The
Section embraces all legitimate reasons to oppose further dealings in
the genus legitimate reasons, which genus embraces other spices as
well.
18. In the present case, admittedly the plaintiff is having the registered
trademark of SRMB, WINGRIP and X-ribs. It is also admitted that the
defendants are also selling the goods having the said marks after
purchasing the said goods from the dealers of the plaintiff. It is not the
case of the plaintiff that the defendants are selling its goods by making
any changes or impairment in the said goods. The defendants had
supplied the documents to the plaintiff to establish that the defendants
have purchased the materials from the dealer of the plaintiff, namely,
"Mishra Steel".
The plaintiff says that the plaintiff has given dealership of the said
goods of the plaintiff having trademark of SRMB, WINGRIP and X-ribs
to Mishra Steel is restricted to Muzaffarpur but the defendants are
selling the product at Islampur. The plaintiff says that dealers should
not encroach other dealers or distributors territory as per the company
policy but in the present case, the defendants are selling the goods in
different area than the Muzaffarpur after purchasing the materials from
Mishra Steel at Muzaffarpur. The plaintiff also says that the e-way bills
relied by the defendants are in connivance and colluded with Mishra
Steel.
19. Considering the above, this Court finds that Mishra Steel is the
distributor/ dealer of the plaintiff and the defendants have purchased
the materials from the dealer of the plaintiff and are selling the same in
the market without any changes and impairment. As regard whether
the defendants are entitled to sell the products at Islampur or the e-
way bills relied by the defendants are in connivance and colluded with
the dealer of the plaintiff can be decided only after exchange of
affidavits.
20. In view of the above, this Court did not find any prima facie case and
balance of convenience in favour of the plaintiff at this stage.
Accordingly, ad interim inunction as prayed for by the plaintiff is
refused.
21. The plaintiff is directed to serve the copy of application, document and
copy of plaint to the defendants within a week from date. The
defendants are directed to file affidavit-in-opposition within two weeks
after puja vacation, reply, if any, thereto be filed within a week
thereafter.
22. List the matter on 26th November, 2024 under the heading "New
Motion".
(Krishna Rao, J.)
p.d/-
