Societe Des Produits Nestle S.A & ... vs Kaira District Co-Operative Milk ...
2017 Latest Caselaw 6980 Del

* IN THE HIGH COURT OF DELHI AT NEW DELHI

%                        Judgment delivered on: 05th December, 2017

+        CS(OS) 1675/2012

SOCIETE DES PRODUITS NESTLE S.A & ANR                       .....Plaintiffs

                               Versus
KAIRA DISTRICT CO-OPERATIVE MILK PRODUCERS
UNION LTD & ANR                       ..... Defendants

Advocates who appeared in this case:
For the Petitioner   :   Mr. Hemant Singh with Ms. Mamta R. Jha, Mr.
                         Manish K. Mishra and Mr. Waseem Shuaib Ahmed,
                         Advocates

For the Respondents :    Mr. Jayant Bhushan, Sr. Advocate with Mr. Snehal
                         Kakrania, Advocate

CORAM:-
HON'BLE MR JUSTICE SANJEEV SACHDEVA

                            JUDGEMENT

SANJEEV SACHDEVA, J

IA No.10759/2012 (under Order XXXIX Rules 1 & CPC)

1. The Plaintiff by this application seeks a restraint on the Defendants from manufacturing, packaging, selling, offering for sale, advertising directly or indirectly dealing in cheese, packaged milk or any other milk products under the Trademark "A+" with or without any prefix or suffix or any other mark as may be identical to or

deceptively similar with the Plaintiffs‟ registered Trademark "A+ logo".

2. This Suit is a Suit for infringement seeking a restraint on the Defendants from infringing the allegedly registered trademark of the Plaintiffs‟ "A+ logo".

3. It is contended that Plaintiff is a company belonging to what is known as "Nestle Group". It is contended by the Plaintiff that it undertook an internal branding study of its liquid milk and dahi products in the year 2010 and working on the inputs, Plaintiff no. 2 decided to test several options with the consumers. It is contended that the consumers preferred "a+" as sub brand for Nestle Milk and Dahi and accordingly the Plaintiff no. 2 launched "Nestle a+" Milk and Dahi which comprises of use of the house mark Nestle and sub brand a+.

4. It is contended that the Plaintiff did due diligence and conducted trademark search at the Trademarks Registry and found the A+ logo to be a registered mark since 1999 vide Regn. No. 865765 in Class 29 dated 14.07.1999 (lapsed) and Trademark Regn. No. 1328432 in Class 29 dated 27.12.2004 in favour of Ajit Singh Om Prakash Ltd.. The Plaintiff is stated to have approached Ajit Singh Om Prakash and they assigned the said mark for Re. 1 only in favour of the Plaintiff vide Deed of Assignment dated 26.08.2011. Though, the registration was for description of goods comprising "preserved,

dried and cooked fruits and vegetables, jellies, gems, eggs, milk and dairy products, edible oils and fats, pickles, meat, fish and poultry" all being goods included in Class 29", the subject matter of assignment was limited to goods comprising of milk and milk products.

5. It is contended that the Plaintiff thereafter, on 28.10.2011, filed an application under Trademark-24 with the Registrar of Trademarks seeking recordal of the Plaintiff no. 1 as the subsequent proprietor based on the deed of assignment.

6. It is further contended that the Plaintiff no. 2 thereafter launched "Nestle a+" Milk & Dahi on 01.12.2011. It is contended that thereafter the Plaintiff spent huge amounts towards promotion and advertisements of its trademark "Nestle a+" Milk & Dahi.

7. It is the case of the Plaintiff that on 05.12.2011, a notice was received by the Plaintiff no. 2 from the Defendants claiming themselves to be the proprietor of Trademark AMUL A+. It is contended that Defendants called upon Plaintiff no. 2 to immediately cease and desist from use of the Trademark "A+" & "a+" for milk products. The Plaintiff thereafter responded to the said notice contending that it was a prior user of the mark based on the Deed of Assignment dated 28.03.2001 for milk and milk products.

8. It is, in these circumstances, that the Plaintiff has filed the present suit seeking a permanent injunction against the Defendants from infringing the registered trademark of the Plaintiff.

9. The contentions of the Defendants, on the other hand, is that the Defendant no. 1 coined and invented trademark labels AMUL CALCI+ and AMUL A+ in a very special and particular manner, for its milk and milk products falling under Class 29. It is contended that the sign "+" together with "CALCI" and "A" is prominently used on the said trademark labels making the sign "CALCI+" and "A+" essential and distinguishing features of the trademark labels AMUL CALCI+ and AMUL A+.

10. It is contended that the Defendant no. 1 had been using the trademark AMUL CALCI+ since 24.12.2007 in respect of milk and dairy products, etc. and the said trademark label has been registered in Class 29 under the Trademark Registration No. 1684926 since 08.05.2008. It is further contended that an application for registration of Trademark label "AMUL A+" in Class 29 has been filed on 17.06.2011 claiming the user since 02.06.2011.

11. It is further contended that the mark "AMUL A+" has been used for cheese slices since 02.06.2011. It is contended that the cheese slices under the trademark label "AMUL A+" contain natural colour Beta-carotene which is precursor for Vitamin A. It is contended that the sign "A+" was a natural choice to help identify cheese slices with added natural colour Beta-carotene, precursor for Vitamin A from those that did not have the said precursor for Vitamin A.

12. By an exparte ad interim order dated 30.05.2012, this Court, noticing the contention of learned Senior Counsel for the Plaintiff that

the Defendants were using the Trademark A+ since 02.06.2011 in respect of Cheese Slices whereas the Plaintiff was using the same with regard to Milk & Dahi, directed both the parties to maintain status quo about the use of sub-brand "A+" in relation to the goods that the respective parties were manufacturing as of the said date. The status quo order has continued since 30.05.2012 and there is no allegation of either party that the same has been violated.

13. On 16.09.2014 the following issues were framed in the Suit:

(1) Whether Plaintiff no.1 is the proprietor of the trade mark A+PLUS under registration no.1328432 in Class 29?

........OPP

(2) Whether the use of the trade mark, A+, by the Defendants amount to infringement of Plaintiffs registered trade mark No.1328432 in Class 29? ........OPP (3) Whether the 'Deed of Assignment' dated 26.08.2011 executed in favour of the Plaintiff no.1 by Ajit Singh Om Prakash Ltd. is invalid? .........OPD (4) Whether the trade mark 'A+PLUS' under registration no.1328432 in class 29 is invalid and liable to be cancelled? ..........OPD

(5) Whether the Plaintiffs are entitled for damages, if yes, to what extent? ..........OPP

(6) Whether the Defendants have used the mark 'A+' in relation to dairy products prior to the use or date of the registration of the trade mark 'A+' by the Plaintiff in relation to dairy product? .........OPD (7) Whether the suit is bad for non-joinder of parties?...OPD

(8) Relief

14. The Defendant had also proposed for framing of an issue as to whether the Plaintiff or the predecessor has substantially used the mark prior to the use of the mark by the Defendant? The said question was kept open to be taken up for consideration once a final decision is taken by the Intellectual Property Appellate Board. Further, since the proceedings for cancellation of the trade mark of the Plaintiff is pending before the Intellectual Property Appellate Board, the proceedings in the Suit have been stayed.

15. With regard to the prima facie case entitling the Plaintiff to an injunction, it would be expedient to consider the rival claims. Admittedly, the Defendants commenced the use of the mark "Amul A+" for cheese on 02.06.2011. The Plaintiffs have started using the mark "Nestle a+" with respect to Milk and Dahi on 01.12.2011. The Plaintiff claims priority of use on the basis of the Deed of Assignment dated 26.08.2011 from Ajit Singh Om Prakash whose user is claimed since 27.12.2004 for Milk and Milk Products.

16. From the facts alleged it prima facie appears that M/s. Ajit Singh Om Prakash Limited, did not use the mark A+ in relation to any milk or milk products. The invoices produced by the Plaintiff show that the mark A+ has been used in conjunction with Tea, Kali Ziri, and Refined Oil etc. With regard to milk products, the mark A+ has not been used in the invoices. No package of A+ milk powder or trade

mark branded A+ has been produced from which a prima facie inference can be drawn that the mark A+ was never used in relation to milk powder or any other milk products by M/s. Ajit Singh Om Prakash Limited. No trade dress of any of the products of the predecessor has been produced to even prima facie show as to how the mark was applied to the products or was it merely used on the invoices.

17. Assignment Deed has been executed by M/s. Ajit Singh Om Prakash Limited for a mere Re 1/-. Though the consideration mentioned in the assignment deed may not be material at this stage, however when this is examined in conjunction with the fact that clause 6 of the Deed stipulates that M/s. Ajit Singh Om Prakash Limited would continue to use the mark A+ and A Plus device for all goods in class 29 except milk and milk products, it assumes significance. It prima facie shows that M/s. Ajit Singh Om Prakash Limited was not using the mark A+ for milk and milk products. There does not seem to be any other reason for a company to give away its trade mark to a complete stranger for a mere Re 1/-.

18. Further, it may be seen that the mark A+ is laudatory and descriptive. Prima facie, it may not have any or may have a very low protective value unless it is used in conjunction with some other mark. In the present case, the Plaintiffs are using it in conjunction with „Nestle‟ and the Defendants with „Amul‟ i.e. „Nestle A+‟ and „Amul

A+‟. "A+" ordinarily means a higher degree of a thing. When used in conjunction with a brand, it could signify a higher degree of the brand.

19. For a laudatory and descriptive mark to be protected, it would have to be shown, by leading evidence, that such a mark, by extensive usage, has acquired distinctiveness and is associated only with the claimant and/or its products and/or services.

20. The order dated 30.05.2012, noticing the fact that the Defendants have been using the Trademark A+ since 02.06.2011 in respect of Cheese Slices and the Plaintiff with regard to Milk & Dahi, directed both parties to maintain status quo about the use of sub-brand "A+" in relation to the goods that the respective parties were manufacturing as of the said date. The said order has been in force until date. The proceedings in the Suit have been stayed to await the outcome of the rectification proceedings before the Intellectual Property Appellate Board. Disturbing the status as on date would cause irreparable loss to both parties. The balance of convenience is not in favour of modifying the status quo that has continued for over five years without the parties proving their case by leading evidence. The order dated 30.05.2012 not only protects the interest of the parties but also protects the interest of consumers who may be confused or misled (if at all) by the rival marks being used for identical products. Furthermore, if the Plaintiff were to finally succeed in the Suit, the Plaintiff could be adequately compensated by award of damages.

21. In view of the above, the order dated 30.05.2012, is made absolute and both parties are directed to maintain status quo about the use of sub-brand "A+" in relation to the respective goods that the parties were manufacturing as of the said date, during the pendency of the Suit. The application is disposed of in the above terms.

22. It is clarified that observations in this order are without prejudice to the stand of the parties before the Intellectual Property Appellate Board in the rectification proceedings.

23. List the Suit, on 12.12.2017, for directions before the roster bench.

24. Order Dasti under signatures of the Court Master.

SANJEEV SACHDEVA, J th December 05 , 2017 rs/HJ