Delhi High Court
Kewal Krishan Kumar And Anr vs Rudi Roller Flour Mills on 13 August, 2014
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Pronounced on: 13th August, 2014
+ CS (OS) No. 393/ 2003
KEWAL KRISHAN KUMAR AND ANR. ..... Plaintiff
Through: Mr. M.K. Miylani, Advocate
Versus
RUDI ROLLER FLOUR MILLS ..... Defendant
Through Ex-parte
CORAM:
HON'BLE MR. JUSTICE G.P. MITTAL
1. This suit for perpetual injunction restraining infringement of trade
mark, passing off, damages and rendition of accounts has been filed
by the Plaintiffs against the Defendant alleging that the trade mark
'SHAKTI BHOG' was adopted by M/s Kumar Dal Mills in the year
1975. M/s Kumar Dal Mills was a partnership firm of Plaintiff no. 1
and his two brothers Jagmohan Kumar and Shri Harbans Lal Kumar.
The two brothers retired from the firm and Plaintiff no. 1 became the
sole proprietor in respect of the trade mark 'SHAKTI BHOG'.
Plaintiff no. 2 was incorporated as a company whereof Plaintiff no. 1
is the Managing Director since its inception till the filing of this suit
and even till recording his evidence as PW-1.
2. It is stated that the trade mark 'SHAKTI BHOG' has been in
continuous and extensive use in respect of goods, namely, flour (atta),
gram flour (besan), dal, maida, sooji, rawa, bran and other
preparations made therefrom and other cereals etc.
CS (OS) No.393/2003 Page 1 of 11
3. The trade mark 'SHAKTI BHOG' is duly registered under no. 391844
in Class 30 from 16th June, 1980 in respect of flour, dal (broken
grains), besan and other preparations made from cereals under the
provisions of the Trade and Merchandise Marks Act, 1958 (the Act).
The said trade mark is valid, subsisting and effective throughout India.
Trade mark 'SHAKTI BHOG' was registered under no. 472286 in
Class 30 in respect of goods including coffee, tea, salt, spices,
condiments, baking powder, yeast, mustard, vinegar, pepper, sauces,
spices, honey, bread, biscuits, cakes, pastry and confectionery etc.
from 15.05.1987.
4. It is averred that Plaintiff no. 1 has given wide publicity to the trade
mark 'SHAKTI BHOG' and its sale had risen from over Rs. 10 lacs in
the year 1975-76 to over Rs. 19 crores in the year 1993-94. After
Plaintiff no. 2 company was incorporated, its sales increased from
over Rs. 38 crores in the year 1996-97 to Rs. 697 crores in the year
2005-06. The advertisement expenditure had also risen from over Rs.
86 lacs in the year 1996-97 to over Rs. 1 crore 64 lacs in the year
2005-06.
5. It is pleaded that the trade mark 'SHAKTI BHOG' is exclusively
identified and associated with Plaintiff no. 2 and adoption of the trade
mark 'SHIV SHAKTI' by the Defendant is only to trade upon and
benefit from the Plaintiffs' hard earned goodwill and reputation to
which the Defendant is not entitled.
6. It is the case of the Plaintiffs that on 18.11.1995, trade mark 'SHIV
SHAKTI' was advertised in the trade mark journal for registration in
the name of Defendant in respect of the same goods for which the
trade mark 'SHAKTI BHOG' of the Plaintiffs was registered. The
CS (OS) No.393/2003 Page 2 of 11
Plaintiffs filed notice of opposition which was contested by the
Defendant. The Assistant Registrar of Trade Marks, however,
dismissed the opposition and proceeded to register the trade mark
'SHIV SHAKTI' in the name of the Defendant. The Plaintiffs were
unsuccessful in an appeal decided in CM (M) No. 550/ 2002 by a
learned Single Judge of this Court by an order dated 21.11.2002. The
second appeal being OCJA No. 1/ 2003 was also dismissed by the
Division Bench by an order dated 27.09.2007.
7. The Defendant has contested the suit by way of filing a written
statement and it denied that the trade mark 'SHIV SHAKTI' registered
in the name of the Defendant was deceptively or confusingly similar
to the trade mark 'SHAKTI BHOG' of the Plaintiffs. It has been stated
that the Defendant being the adopter of composite label 'SHIV
SHAKTI' with the device of Trishool and Damroo since the year 1990
has honestly adopted the trade mark which was not only allowed to be
registered by the Registrar of Trade Marks, but also the first and
second appeals preferred by the Plaintiffs were also dismissed. It has
also been stated that not only his trade mark is distinguished from that
of the Plaintiffs, the customers of the Plaintiffs and the Defendant are
also different as the Defendant was mainly selling the goods in gunny
bags of 20 kgs. whereas the Plaintiffs' line of activities was restricted
to kirana products and food products in gunny bags of 5 and 10 kgs.
The Defendant thus, prayed for dismissal of the suit.
8. In the replication, the Plaintiffs have denied the averments made in the
written statement and have reiterated the averments made in the Plaint.
9. On the basis of the pleadings of the parties, following issues were
framed by an order dated 28.10.2005:-
CS (OS) No.393/2003 Page 3 of 11
"1) Whether the suit has been properly valued for the
purpose of Court fees and jurisdiction and appropriate
Court fees has been paid? OPP
2) Whether the plaintiff is the owner and proprietor of mark
"Shakti Bhog", if so to what effect? OPP
3) Whether the plaintiff is entitled for perpetual injunction
as prayed for? OPP
4) Whether the plaintiff is entitled for rendition of accounts?
If so, for what period?
5) Whether the plaintiff is entitled for damages? If so, how
much? OPP
6) Whether the suit of the plaintiff is not maintainable
without assignment of the said mark in favour of plaintiff?
OPD
7) Whether the suit is barred on account of delay, laches
and acquiescence? OPD
8) Whether there is any likelihood of deception and
confusion in respect of the trademarks of the plaintiff and
the defendant, if so to what effect? OPD (sic. OPP)
9) Whether the defendant is an honest concurrent user of his
mark for a long period of time? If so to what effect? OPD
10) Whether the goods of the defendant can be passed or
likely to be passed as that of plaintiff? If so to what effect?
OPP
11) Relief."
10. Subsequently, Plaintiff no. 1 was permitted to amend the plaint to take
the plea that Plaintiff no. 1 as proprietor of the trade mark 'SHAKTI
BHOG' has assigned the trade mark in favour of Plaintiff no. 2 by
Deed of Assignment dated 28.02.2007.
CS (OS) No.393/2003 Page 4 of 11
11. There was an attempt to settle the dispute through mediation.
However, the mediation failed.
12. By an order dated 21.02.2012, the Defendant was ordered to be
proceeded ex-parte.
13. In ex-parte evidence, Plaintiff no. 1 filed his Affidavit Ex. PW-1/A.
He proved the assignment of the trade mark 'SHAKTI BHOG' in
favour of Plaintiff no. 2 Ex. P-3 and the copies of the registration and
renewal certificates of trade mark 'SHAKTI BHOG' in respect of
Class 30 as Ex. P-4 to P-10. He proved various invoices indicating
sales of goods bearing trade mark 'SHAKTI BHOG' as Ex. P-13 to P-
42 and some advertisement and bills as Ex. P-43 to P-70. He testified
that the trade mark 'SHIV SHAKTI' was advertised in the trade mark
journal for registration on 18.11.1995. A copy of the advertisement
was proved as Ex. P-71. In the Affidavit, PW-1 claimed token
damages/ compensation of Rs. 5 lacs.
14. Since the Defendant was ordered to be proceeded ex-parte, its defence
is not on record.
15. My issue wise findings are as under:-
ISSUE NO. 1
16. The Plaintiffs have valued the suit for the relief of three injunctions at
Rs. 200/- each and for the purpose of jurisdiction at Rs. 15 lacs and
have claimed damages of Rs. 5 lacs. The Plaintiffs have paid a total
court fee of Rs. 7,324/-. I am unable to see any defect in valuing the
suit for the purpose of court fee and jurisdiction. The issue is
accordingly decided in affirmative.
CS (OS) No.393/2003 Page 5 of 11
ISSUE NO. 2
17. The Plaintiffs' evidence that the trade mark 'SHAKTI BHOG' was
being used by the partnership firm Kumar Dal Mills of Plaintiff no. 1
since 1975 has remained unchallenged and unrebutted. It has also not
been challenged that Plaintiff no. 1 became the proprietor of the firm
Kumar Dal Mills in the year 1990 and that the trade mark 'SHAKTI
BHOG' was assigned by Plaintiff no. 1 in favour of Plaintiff no. 2
company by a Deed of Assignment Ex. P-3. This evidence has also
remained unchallenged and unrebutted. Thus, it is established that
initially Kumar Dal Mills, then Plaintiff no. 1 and since the year 2007,
Plaintiff no. 2 company is the owner and proprietor of trade mark
'SHAKTI BHOG'. The issue is accordingly decided in affirmative.
ISSUE NO. 6
18. In view of my findings on issue no. 2 and subsequent assigning of the
trade mark in favour of Plaintiff no. 2, this issue has become
redundant.
ISSUE NO. 7
19. No evidence was produced by the Defendant to prove that the
Plaintiffs were aware of the use of the trade mark 'SHIV SHAKTI' by
the Defendant for a very long time. The case set up by the Defendant
itself was that the trade mark 'SHIV SHAKTI' was adopted by the
Defendant since the year 1970. It applied for registration of the trade
mark in the year 1995. Immediately on publication of the mark,
opposition was filed by the Plaintiffs. Thus, it cannot be said that the
Plaintiffs' suit is barred on account of delay, laches and acquiescence.
The issue is decided in negative.
CS (OS) No.393/2003 Page 6 of 11
ISSUE NO. 9
20. The onus to prove this issue was on the Defendant. The Defendant has
not adduced any evidence to prove the onus and being the concurrent
user of the trade mark for a long time. However, I refrain from giving
any finding on this issue as the suit is going to be decided on other
issues.
ISSUES NO. 3, 4, 5, 8 and 10
21. It is admitted case of the parties that the Defendant applied for
registration of the trade mark 'SHIV SHAKTI' in the year 1995. On
18.11.1995, trade mark 'SHIV SHAKTI' was advertised in the trade
mark journal for registration in the name of Defendant in respect of
same goods for which trade mark 'SHAKTI BHOG' of Plaintiffs was
registered. The advertisement was proved by PW-1 as Ex. P-71. The
Plaintiffs issued a notice of opposition which was dismissed by the
Assistant Registrar of Trade Marks and ultimately the Defendant's
trade mark 'SHIV SHAKTI' was registered. The Plaintiffs filed an
appeal being CM (M) No. 540/ 2002 which came to be dismissed by
the learned Single Judge of this Court. The second appeal being OCJA
No. 1/2003 was also dismissed by the Division Bench of this Court by
an order dated 27.09.2007. While dismissing the appeal by an order
dated 21.11.2002, the learned Single Judge noticed various
distinguishing features in the two registered marks. The learned Single
Judge opined that there was a lot of phonetic and visual difference.
Distinguishing the judgment in K.R. Chinna Krishna Chettiar v. Sri
Ambal & Co., AIR 1970 SC 146, the learned Single Judge held as
under:-
CS (OS) No.393/2003 Page 7 of 11
"9. .............It may be mentioned that the customers who
would be using the goods of the two parties here would
no doubt find the word „Shakti‟ same. But „Shiv Shakti‟
alongwith the device would certainly make a difference,
for there would be phonetic as well as ocular difference
in the case in hand. Besides, the word "Bhog" is not
being used and further it is very much apparent that the
appellant is not using any device at all in Shakti Bhog for
the registered trademark is only „Shakti Bhog‟ without
any device. In this case of the respondents are using
device of Trishul and Damru alongwith the words „Shiv
Shakti‟ which would be phonetically as well as visually
different."
22. The Division Bench also held that the trade marks 'SHAKTI BHOG'
and 'SHIV SHAKTI' with the device of Trishul and Damroo were
distinct and different and there was no similarity at all. The
observations of the Division Bench in Kewal Krishan Kumar v. Rudi
Roller Flour Mills (P) Ltd. & Anr., 2007 (35) PTC 848 (Del.) are
extracted hereunder:-
"8. ............ The issue that arises for our consideration is
whether the impugned trade mark and label 'Shiv Shakti'
by the respondent is deceptively similar to the registered
trade mark 'Shakti Bhog' of the appellant. In the
aforesaid two competing trade marks the word/
expression 'Shakti' is common. The said word is
otherwise a descriptive word denoting 'strength' and
'power'. What is registered in favor of the appellant is not
'Shakti' but 'Shakti Bhog' whereas what is registered in
favor of the respondent no. 1 is the word 'Shiv Shakti'
with the device of 'Trishul' and 'Damru'. A comparative
look of the labels of the appellant and the respondent no.
1 would make it crystal clear that the aforesaid two
competing labels are distinctly different and that there is
no identity at all. Therefore, there is no visual similarity
of the two labels as are being used by the appellant and
the respondent no. 1 in their products.
9. The next question which needs consideration is
whether there is any phonetical similarity phonetic
between the two trademarks. In our considered opinion
the two competing marks cannot be said to be
phonetically similar also for there is a vast difference
between the two marks namely, 'Shiv Shakti' and 'Shakti
Bhog Atta'. The prefix used by the respondent no. 1
before the word 'Shakti' with the device of 'Trishul' and
'Damru' is descriptive of Lord Shiva, the Hindu God. The
said words have no connection or relevance with the
word 'Shakti Bhog Atta' which is the trade mark of the
appellant. In various decisions the Supreme Court and
the different High Courts held that it is the syllable of a
trade mark which is generally considered as the most
important part, especially in case of short words. It was
also held that it is on the letters which precede the
termination of the letters upon which an intending
purchaser must always rely and on which he must direct
his attention. In American Home Products Corporation
v. Mac Laboratories Pvt. Ltd., AIR 1986 SC 137, the
Supreme Court held that the marks are different and not
similar considering the prefix. In Fox & Company
reported in 1920 37 RPC 37 trade marks "Motrate" and
"Filtrate" were held to be not similar. 'Rece Master' was
not held to be similar to 'Master' although both the trade
marks related to the same goods namely, diesel oil
engines, as held by the Bombay High Court in M/s R.T.
Engineering and Electronics Company reported AIR
1972 Bom 157. In Coca Cola Company of Canada Ltd. v.
Pepsi Cola Company of Canada Ltd. reported in AIR
(29) 1942 Privy Council 40, the Privy Council held that
Pepsi Cola is not similar to Coca Cola for beverages as
the distinctive feature in both the words was the first part
i.e. "Coca" and "Pepsi" and that cola was the word only
used as a part of the marks for beverages. In that case in
respect of the stand as to whether the word 'cola' is
descriptive and only adopted in naming of beverages, it
was held that actually the word was descriptive.
10. In our considered opinion the same is the position
and situation in the present case, for 'Shakti' which is
common in both the trade marks is only descriptive
whereas 'Shiv' and 'Bhog' are completely distinctive
features of the two marks and therefore there is no
likelihood that anyone would confuse with the word 'Shiv'
with 'Bhog'. 'Shiv Shakti' is phonetically miles away from
the word 'Shakti Bhog Atta'.........."
23. It is also admitted that an SLP preferred by the Plaintiffs was
dismissed by the Supreme Court and the registration of the trade mark
has attained finality.
24. There is no dispute about the proposition of law that in spite of the
Defendant's mark being registered, the Plaintiffs could have shown
that there was similarity between the two marks and that the
Defendant was guilty of passing off of its goods as those of the
Plaintiffs. However, no evidence in this regard was led by the
Plaintiffs.
25. I am conscious of the fact that registration of a trade mark and a suit
for infringement of the trade mark are two different things and the
Plaintiffs in civil action can show that the trade mark of the Defendant
was deceptively or confusingly similar to that of the Plaintiffs. That
however, was not done.
26. In view of distinguishing features noticed by the learned Single Judge
in Kewal Krishan Kumar v. Rudi Roller Flour Mills (P) Ltd. & Anr.,
CM (M) No. 549/ 2002, decided on 21.11.2002 and reported as 2003
(26) PTC 175 (Delhi) and by the Division Bench in Kewal Krishan
Kumar v. Rudi Roller Flour Mills (P) Ltd. & Anr., OCJA No. 1/ 2003
decided on 27.09.2007 and reported as 2007 (35) PTC 848 (Delhi), the
Plaintiffs are disentitled to the relief of perpetual injunction as claimed
by them.
27. Since, it cannot be said that the Plaintiffs' trade mark has been
infringed by the Defendant, they are not entitled to grant of perpetual
injunction as claimed. Consequently, they are not entitled to any
rendition of accounts or damages. It also cannot be said that the
Defendant has passed or is likely to pass its goods as that of the
Plaintiffs. Issues No. 3, 4, 5, 8 and 10 are accordingly decided in
negative.
28. In view of my findings on issues above, the suit of the Plaintiffs is
hereby dismissed. In peculiar facts of this case, the parties are left to
bear their own costs.
29. Pending applications also stand disposed of.
(G.P. MITTAL)
JUDGE
AUGUST 13, 2014
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