Bikanervala vs Aggarwal Bikanerwala
2005 Latest Caselaw 136 Del

JUDGMENT

R.C. Jain, J.

1. This is an application under Section 135(2) of the Trade Marks Act, 1999 and Order 39 Rules 1 and 2 read with Section 151 CPC, made on behalf of the plaintiff seeking an ad interim injunction restraining the defendant, its servants, stockists, distributors, agents and retailers from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/tradename/infringing artistic label 'AGGARWAL BIKANER WALA' annexed as Annexure-B to the plaint or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's copyright and/or its famous trade mark/trade name 'BIKANERVALA'.

2. Plaintiff has filed a suit under Section 27(2) read with Sections 134 and 135 of the Trade Marks Act, 1999 and Sections 51 and 55 of the Copyright Act, 1957 for permanent injunction restraining infringement of copyright, passing off, rendition of accounts etc. on the averments that the plaintiff's firm has coined and adopted the hinglish expression 'BIKANERVALA' which the plaintiff has been using extensively since 1981 in respect of the sweetmeat and other allied and cognate products. In the year 199(sic) the plaintiff adopted a distinctive and eye catching artistic label titled 'BIKANERVALA' by using the same in a unique script in as much as each of the labels are written in a unique thick font and the said artistic work of the plaintiff is duly registered under the provisions of the Copyright Act, 1957. The plaintiff claims to have built up an enviable reputation and valuable goodwill in the eyes of the traders and general public at large in respect of its goods being sold under the said mark/artistic work and its total turnover is stated to be more than Rs. 300.00 crores. The case of the plaintiff is that in the last week of January, 2004 the plaintiff learnt that the defendant is running a sweetmeat shop under a deceptively similar trademark /tradename/artistic work of 'AGGARWAL BIKANER WALA', which is phonetically and visually identical with that of the plaintiff's trademark. The defendant is using the said mark with a view to cause confusion and deception in the trade and public and to make unlawful and illegal gains. It is alleged that the defendant has made a misrepresentation in the trade and business to prospective customers which is likely to lead create immense confusion to the public at large and create an impression that defendant's products are in some way connected with the plaintiff, which representation is calculated to cause perjury and damage both the plaintiff's business and its reputation.

3. The suit and the application is being contested by the defendant and written statement/reply has been filed raising preliminary objections denying that the plaintiff has any exclusive right to the word 'BIKANERVALA' because the said word contains a geographical name which cannot be permitted under the law. It is denied that the use of the word 'AGGARWAL BIKANER WALA' by the defendant in respect of his goods is structurally, visually and phonetically similar to the trademark of the plaintiff. It is denied that the plaintiff is entitled to any injunction as sought for by him.

4. I have heard Mr. Ajay Sahni, learned counsel appearing for the plaintiff and Mr. Manmohan Singh, learned counsel representing the defendant and have given my thoughtful consideration to their respective submissions. Mr. Manmohan Singh, learned counsel for the defendant has emphatically urged that the plaintiff is not the proprietor of the word 'BIKANERVALA' and cannot claim any monopoly on this word because it contains a geographical name. This aspect has been considered in detail by this Court while disposing off an application, being IA 1138/2004 in CS(OS) 165/2004; Titled Bikanervala v. New Bikanerwala, and the Court found that such a mark as coined, adopted and used by the plaintiff is capable of protection and, therefore, this question is answered accordingly. Though in the written statement the defendant has denied that the use of the word 'AGGARWAL BIKANER WALA' by the defendant is identical or deceptively similar to the mark 'BIKANERVALA' of the plaintiff and that the cartons/boxes use by the defendant are entirely different, but in para-12 of the written statement, it has been stated that the defendant is ready to change the same in case the plaintiff has objection to any features of the same. For the reasons given in the order on IA 1138/2004 in CS(OS) 165/2004 dated 31st January, 2005 this Court is of the clear view that the use of the word 'AGGARWAL BIKANER WALA' by the defendant is structurally, visually and phonetically similar to that of the plaintiff's mark 'BIKANERVALA' and, therefore, the defendant is not entitled to use the said expression. During the course of hearing held on 15.4.2004 the Court observed as under:

''Learned counsel for the plaintiff has pointed out that in para 12 of the written statement, the defendant itself has submitted that he is using the name 'AGGARWAL BIKANER' and is not using the word 'BIKANERVALA' and as such, the plaintiff will have no objection if the defendant continues to use the name 'AGGARWAL BIKANER'. Learned counsel for the defendant submits that on account of a typographical mistake only, the name 'AGGARWAL BIKANER' has been mentioned and in fact, the defendant's name is 'AGGARWAL BIKANERVALA'. He wants time for filing the amended written statement. Let the same be filed within two weeks with advance copy to learned counsel for the plaintiff.''

5. The defendant accordingly got his written statement amended and now his stand seems to be that he is entitled to use the term 'AGGARWAL BIKANER WALA' which is not deceptively similar to the mark of the plaintiff. The Court has compared the two marks as also the plaintiff's sample of the box and the artistic work which is registered with the Registrar of Copyright and the sample of the packaging box of the defendant and on such comparison, this Court is of the clear opinion that the box of the defendant contains identical yellow and white strips and is deceptively similar to that of the plaintiff.

6. In the circumstances, the application of the plaintiff deserves to be allowed and an injunction is granted in favor of the plaintiff and against the respondent till the disposal of the suit restraining the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/trade name/infringing artistic label 'AGGARWAL BIKANER WALA' annexed as Annexure-B to the plaint or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark 'BIKANERVALA'. The defendant is, however, granted two weeks time to adopt a different mark and packing label etc.

7. With these observations the application is disposed of.

CS(OS) 67/2004

The suit be listed before the Joint Registrar for completion of admission /denial of documents on 24th February, 2005.