Bikanervala vs Bikaner Sweetwala
2005 Latest Caselaw 138 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, stockiest, 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 'BIKANER SWEETWALA' annexed as Annexure-B to the plaint or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BI ANER 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 English 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 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. In January, 2004 the plaintiff learnt about the use of a deceptively similar trademark /tradename/artistic work of 'BIKANER SWEETWALA' by the defendant in respect of its sweetmeat e c., which according to the plaintiff amounts to the infringement of the plaintiff's copyright in the said mark and amounts to passing off of the goods of the defendant as that of the plaintiff.

3. The suit and the application are being contested by the defendant and written statement/reply has been filed raising preliminary objections and denying that the plaintiff is entitled to protection of his trademark 'BIKANERVALA' or that the defendant's user of the mark 'BIKANER SWEETWALA' amounts to passing off action or the plaintiff is entitled to the injunction action. It is also denied that the plaintiff is entitled to the ad interim injunction as sought for by him.

4. I have heard Mr. Ajay Shane, learned counsel appearing for the plaintiff and Mr. Ashok Mittal, learned counsel representing the defendant and have given my thoughtful consideration to their respective submissions. So far as the plea of the defendant that the plaintiff is not entitled to claim protection in respect of the mark/tradename 'BIKANERVALA' because it contained a geographical name 'Bikaner', this Court while disposing off an application, being IA 1138/2004 in CS(OS) 165/2004; Titled M/s Bikanevala v. M/s New Bikanerwala, has taken a view that despite the trademark/business name containing the geographical name, the said mark 'BIKANERVALA' is entitled to protection by virtue of the same having been coined and adopted and used by the plaintiff for a long time. The said question is not required to be re-considered. In the said case the offending mark was 'NEW BIKANERVALA' and, therefore, the Court granted an ad interim injunction. However, in the case in hand, the mark of the defendant is different i.e. 'BIKANER SWEETWALA'. Counsel for the plaintiff has fairly submitted before the Court that the plaintiff is not claiming any right in the word/expression 'BIKANER' and anybody is free to use 'Bikaner' in relation to his goods. Therefore, the important question which arises for consideration is as to whether the word/expression 'BIKANER SWEETWALA' , used by the defendant, is deceptively similar to the mark/tradename of the plaintiff. This Court on a comparison of the two marks i.e. 'BIKANERVALA' of the plaintiff and 'BIKANER SWEETWALA' of the defendant is of the considered opinion that there is no structural, visually or phonetic similarity in the two trademarks/tradenames because the defendant is not using 'BIKANERVALA' anywhere in his mark. Once there is no objection to the use of the geographical name 'Bikaner', the mark of the defendant 'BIKANER SWEETWALA' cannot be said to be an infringing or deceptively similar mark to that of the plaintiff's mark. However, on a comparison of the artisti work of the plaintiff which is registered with the Registrar of Copyright with the label on the packaging box of the defendant, it would appear to the Court that the defendant has used the same / similar/identical font as used by the plaintiff in printing the word 'BIKANER' on its label on the front as well as on four sides of the box, which can be said to be an infringement of the copyright of the plaintiff.

5. In view of the above facts and circumstances, this Court is of the opinion that while the plaintiff is not entitled to the grant of any ad interim injunction against the defendant for restraining the defendant from using the mark 'BIKANER SWEETWALA', it would adequately meet the ends of justice if the defendant is called upon to change the font of the word/expression 'BIKANER' appearing on its boxes or any other packing material, sign boards etc. The defendant is granted two weeks time to discontinue the user of packing material bearing the printed word 'BIKANER' in the font resembling to that of the plaintiff. The defendant would be free to use a different font/print for this expression.

6. With these observations the application is disposed of.