Calcutta High Court
Bardhaman Agro Products I Private ... vs Kiran Mallik on 28 March, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
(Intellectual Property Rights Division)
BEFORE:
The Hon'ble Justice Ravi Krishan Kapur
IA NO. GA-COM/1/2024
IA NO. GA-COM/2/2024
In IP-COM/20/2024
BARDHAMAN AGRO PRODUCTS I PRIVATE LIMITED
Vs
KIRAN MALLIK
For the plaintiffs : Mr. Ranjan Bachawat, Senior Advocate
Mr. Debnath Ghosh, Senior Advocate
Mr. Biswaroop Mukherjee, Advocate
Mr. Shuvasish Sengupta, Advocate
Mr. T.K. Jana, Advocate
Mr. Gopal Das, Advocate
Mr. Sourav Jana, Advocate
For the respondents : Mr. Sayan Roychowdhury, Advocate
Mr. Paritosh Sinha, Advocate
Mr. K. K. Pandey, Advocate
Mr. Kironjit B. Majumder, Advocate
Ms. Pooja Sett, Advocate
Judgment on : 28 March 2025
Ravi Krishan Kapur, J.:
1. This is a suit is for infringement and passing off. By consent of the parties
both the applications, GA 1 of 2024 seeking interim reliefs and GA 2 of
2024 for rejection of the plaint and dismissal of the suit were heard
analogously.
2. The petitioner is engaged in the business of manufacture, sale and
distribution of rice since 2001.
3. The petitioner is also the registered user of the mark "ROSE" along with a
pictorial device of a rose. The petitioner had applied for registration of the
ROSE mark in or about November 2003 and obtained registration of the
same on 17 October 2005 in Class 30 under the Trade Marks Act 1999.
The said registration is valid and subsisting. The mark is prominently
displayed on all the bills, packaging materials, brochures of the petitioner.
With the passage of time, the product of the petitioner has gained immense
goodwill amongst consumers and also has a substantial turnover. The
petitioner has also incurred huge promotional and advertising expenses in
respect of their goods under the mark "ROSE". Several pictorial devices of
ROSE have been registered in favour of the petitioner under the Act. There
is also no condition nor limitation on the petitioner's ROSE marks either in
relation to the word mark or the device marks. The petitioner has also
obtained copyright registration of the stylized representation of the device
mark "ROSE" in its favour on 2 December 2023.
4. In or about March 2024, the petitioner came to learn that the respondent
has obtained registration of a deceptively similar mark "MAMU ROSE" for
identical goods i.e., rice falling in class 30 under the Act. Upon further
enquiries, it also transpired that the respondent has filed an application for
registration claiming to be the user of the impugned mark since 2 April
2016 and obtained registration on 8 July 2019. The respondent has also
applied for registration of a pictorial device of a rose alongwith the words
"MAMU ROSE" written below. Subsequently, the petitioner had filed an
application for cancellation of registration of the impugned mark which is
pending final adjudication.
5. It is contended by the petitioner that the respondent has intentionally
chosen to adopt the "Rose" mark with the prefix "MAMU" as well as the
pictorial device of a rose which is an essential feature of the petitioner's
mark. The impugned mark is visually, phonetically and structurally similar
to that of the petitioner's mark. There is every possibility of confusion and
deception. There is a deliberate attempt by the respondent to ride on the
goodwill and reputation of the petitioner.
6. On behalf of the respondent it is alleged that, the respondent is a bonafide
and honest user of the mark MAMU ROSE. The combination of the words
"MAMU" and "ROSE" had been coined and adopted by the respondent. The
respondent had also obtained registration of the impugned mark in 2019.
It is further contended that the petitioner is not entitled to any relief since
the petitioner at the time of registration of their mark had claimed the word
ROSE to be common to the trade. As such, the contention of the petitioner
that the mark ROSE has acquired distinctiveness is without basis. It is also
contended that no part of the cause of action has arisen within the
territorial jurisdiction of this Court since the respondent does not sell its
products within the jurisdiction. There is also no merit in the case of
passing off since the petitioner has admitted that "Rose" is common to
trade and numerous traders are using the word Rose in the same category
of goods.
7. Prima facie it appears from the records that the petitioner has been in
extensive continuous and uninterrupted use of the mark "ROSE" alongwith
its various device marks and annotations as early as 2001 and had also
obtained registration of same in 2003.
8. For convenience, the rival trade marks are set out below:
Petitioner's Mark Respondent's Mark
9. There is a deceptive similarity between the two marks. The impugned
device is also strikingly identical to that of the petitioner. Both products are
registered in the same category of goods. Both the goods are also being sold
through the same trade channels. Prima facie, the respondent has clearly
infringed the petitioner's mark by adopting an imitation thereof. The
impugned mark is also deceptively similar to that of the petitioner's mark
making it difficult for a consumer of average intellect or improper
recollection to differentiate between the two.
10. The petitioner is also the prior adopter and user of the mark "ROSE", long
before the respondent had launched its product and began using the
impugned mark. The impugned mark is visually, structurally and
phonetically similar to that of the petitioner. The device "ROSE" is also an
exact imitation of the device mark of the petitioner. The use of the same
artistic representation of the pictorial device also infringes the copyright
registration in favour of the petitioner. The glaring similarities and
deceptive imitations of the impugned mark are bound to create confusion
and deception amongst consumers. Both products are in the similar
category of goods. They are dealt with through the same trading channels.
In such circumstances, there is every possibility of confusion and
deception.
11. The subsequent adoption of the impugned mark and the close visual and
structural similarity with the mark of the petitioner is also dishonest and
malafide. The mere addition of the word 'MAMU' as a prefix to the
petitioner's mark is prima facie with ulterior intent. Moreover, the artistic
representation of the pictorial device 'Rose' used by the respondent is
bound to create confusion and also results in infringement of the copyright
of the petitioner. It is evident that the respondent is trying to ride on the
goodwill and reputation of the petitioner and also pass off their products as
that of the petitioner. Under such circumstances, the contention of the
respondent that the adoption of the impugned mark is honest or bonafide
is without any basis and unsubstantiated. There is absolutely no
explanation nor attempt to justify as to why and how the respondent has
come to adopt the impugned mark. Where a respondent has imitated or
adopted the petitioner's registered trade mark, an order of injunction ought
to be necessarily passed. The respondent by using the impugned mark in
respect of similar goods has infringed the registered trade mark of the
petitioner. [Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65]
12. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceuticals
Laboratories, (1965) 1 SCR 737 it has been held as follows:
"28.... These 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. The 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. But there the
correspondence between the two ceases. In an action for infringement, the
plaintiff must, no doubt, make out that the use of the defendant's mark is likely
to deceive, but where the similarity between the plaintiff's and the defendant's
mark is so close either visually, phonetically or otherwise and the court reaches
the conclusion that there is an imitation, no further evidence is required to
establish that the plaintiff's rights are violated."
13. The object and scheme of the Act is inter-alia to recognise the superior
rights of the prior user so much so that even a subsequently registered
proprietor is disentitled from interfering with the same. This is also evident
on a conjoint reading of the sections 27, 28 and 34 of the Act has been
unable to substantiate its claim of user since 2016. In S. Syed
Mohideen v. P. Sulochana Bai (2016) 2 SCC 683 it has been held as follow:
28. However, what is stated above is the reflection of Section 28 of the Act
when that provision is seen and examined without reference to the other
provisions of the Act. It is stated at the cost of repetition that as per this
section owner of registered trade mark cannot sue for infringement of his
registered trade mark if the appellant also has the trade mark which is
registered. Having said so, a very important question arises for consideration
at this stage, namely, whether such a respondent can bring an action against
the appellant for passing off invoking the provisions of Section 27(2) of the
Act. In other words, what would be the interplay of Section 27(2) and Section
28(3) of the Act is the issue that arises for consideration in the instant case.
As already noticed above, the Trial Court as well as the High Court have
granted the injunction in favour of the respondent on the basis of prior user
as well as on the ground that the trade mark of the appellant, even if it is
registered, would cause deception in the mind of the public at large and the
appellant is trying to encash upon, exploit and ride upon on the goodwill of
the respondent herein. Therefore, the issue to be determined is as to whether
in such a scenario, the provisions of Section 27(2) would still be available
even when the appellant is having registration of the trade mark of which he
is using.
30.4. Section 34 of the Trade Marks Act, 1999 provides that nothing in this
Act shall entitle the registered proprietor or registered user to interfere with
the rights of prior user. Conjoint reading of Sections 34, 27 and 28 would
show that the rights of registration are subject to Section 34 which can be
seen from the opening words of Section 28 of the Act which states "Subject to
the other provisions of this Act, the registration of a trade mark shall, if valid,
give to the registered proprietor...." and also the opening words of Section 34
which states "Nothing in this Act shall entitle the proprietor or a registered
user of registered trade mark to interfere...." Thus, the scheme of the Act is
such where rights of prior user are recognised superior than that of the
registration and even the registered proprietor cannot disturb/interfere with
the rights of prior user. The overall effect of collective reading of the
provisions of the Act is that the action for passing off which is premised on
the rights of prior user generating a goodwill shall be unaffected by any
registration provided under the Act. This proposition has been discussed in
extenso in N.R. Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn.,
1995 SCC OnLine Del 310 : AIR 1995 Del 300] wherein the Division Bench of
the Delhi High Court recognised that the registration is not an indefeasible
right and the same is subject to rights of prior user. The said decision
of Whirlpool [N.R. Dongre v. Whirlpool Corpn., 1995 SCC OnLine Del 310 :
AIR 1995 Del 300] was further affirmed by the Supreme Court of India
in N.R. Dongre v. Whirlpool Corpn. [N.R. Dongre v. Whirlpool Corpn., (1996) 5
SCC 714]
30.5. The above were the reasonings from the provisions arising from the
plain reading of the Act which gives clear indication that the rights of prior
user are superior than that of registration and are unaffected by the
registration rights under the Act.
33.Fourthly, it is also a well-settled principle of law in the field of the trade
marks that the registration merely recognises the rights which are already
pre-existing in common law and does not create any rights. This has been
explained by the Division Bench of the Delhi High Court in Century Traders v.
Roshan Lal Duggar & Co. [Century Traders v. Roshan Lal Duggar & Co.,
1977 SCC OnLine Del 50 : AIR 1978 Del 250] in the following words: (SCC
OnLine Del para 10)
"10. '16. ... First is the question of use of the trade mark. Use plays an all-
important part. A trader acquires a right of property in a distinctive mark
merely by using it upon or in connection with his goods irrespective of the
length of such user and the extent of his trade. The trader who adopts such a
mark is entitled to protection directly the article having assumed a vendible
character is launched upon the market. Registration under the statute does
not confer any new right to the mark claimed or any greater rights than what
already existed at common law and at equity without registration. It does,
however, facilitate a remedy which may be enforced and obtained
throughout 'the State and it established the record of facts affecting the right
to the mark. Registration itself does not create a trade mark. The trade mark
exists independently of the registration which merely affords further
protection under the statute. Common law rights are left wholly unaffected.'
[Ed.: As observed in L.D. Malhotra Industries v. Ropi Industries, 1975 SCC
OnLine Del 172, para 16.] "
14. The objection raised on the ground of jurisdiction is also without merit. It
has been averred in the plaint that the products of the respondent are
widely sold and distributed in Hatibagan, College Street Market, Jaan
Bazar Market and other markets all within the jurisdiction of this Court.
In view of the pleadings in the plaint and on the principle that the
allegations in the plaint are taken to be true and correct there is no
substance in the point of jurisdiction and the same stands rejected. [Indian
Mineral & Chemical Co V Deutsche Bank, (2004) 12 SCC 376, Exphar Sa vs.
Eupharma Laboratories Ltd, (2004) 3 SCC 688 and D Oceanic Dolphin
Apparels Pvt. Ltd. V Leather Co. and Others, 2024 SCC OnLine Del 6207 ].
15. In the above circumstances, the petitioners have been able to make out a
strong prima facie case on merits. The balance of convenience and
irreparable injury are also in favour of orders being passed in favour of the
petitioner.
16. Accordingly, GA No 1 of 2024 stands allowed. There shall be an order in
terms of prayer (a) & (b) of the Notice of Motion in GA No 1 of 2024.
Consequently, GA no 2 of 2024 stands dismissed.
(Ravi Krishan Kapur, J.)
