Delhi High Court
Malook Chand Cotton And Oil Mills vs Abhishek Gupta Trading As Hariom ... on 6 October, 2022
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 6th October, 2022
+ CS(COMM) 253/2022
MALOOK CHAND COTTON AND OIL MILLS ..... Plaintiff
Through: Mr. Chitra Ahluwalia, Mr. S.K.
Bansal and Mr. Virender Sinha,
Advocates. (M:9873185628)
versus
ABHISHEK GUPTA TRADING AS HARIOM
ENTERPRISES ..... Defendant
Through: Mr. S.S. Dhir and Mr. Manmohan
Singh, Advocates. (M:9711409889)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(oral)
1.
This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff- M/s Malook Chand
Cotton and Oil Mills against the Defendant- Mr. Abhishek Gupta, trading as
M/s Hariom Enterprises. The Plaintiff seeks permanent injunction in respect
of its mark 'DOUBLE HIRAN' as also the accompanying label which is
used in respect of mustard oil and other edible oils. The case of the Plaintiff
is that its predecessor- M/s Tilak Ram & Sons (P) Ltd., adopted the mark
'DOUBLE HIRAN' in 1942 and over the course of time, the label changed
and evolved. The right to use the said mark was given to the Plaintiff by its
predecessor vide sale deed dated 18th August, 1982.
3. The first registration of the device mark bearing no.2774 was granted
in the name of the predecessor of the Plaintiff on 29 th July, 1942. As per ld.
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
Counsel for the Plaintiff, the said mark may not be valid and standing on the
Register as on date. However, the current status of the trade mark
erroneously shows that the same is renewed till 29th July 2049. Apart from
the said registration, the Plaintiff also has trademark registration for the
word mark 'DOUBLE HIRAN' written in English bearing trademark
number 1476828 from 7th August, 2008 with user from 1st January 1977.
Two label marks of 'DOUBLE HIRAN' are also registered in favour of the
Plaintiff as of 2008 and 2014 under classes 29 and 35 in respect of edible oil
including mustard oil. The user claimed in both the trademark registrations
is of 1960.
4. The label of the Plaintiff is also registered under the Copyright Act,
1957 bearing registration no. A44332/84, a copy of which has been placed
on record. The Plaintiff also promotes its business and the products through
the website www.doublehiranoil.com. The mark 'DOUBLE HIRAN' with
the device of two deer standing one behind the other forms the essential and
prominent feature of the Plaintiff's brand. It is claimed that the Plaintiff's
mark 'DOUBLE HIRAN' and the accompanying device/label has acquired
enormous goodwill and reputation in the market. The sales figure of mustard
oil and mustard cake in the last year 2021-2022 is claimed to be to the tune
of Rs.135 crores and Rs.5 crores respectively. The yearwise turnover has
also been placed on record.
5. The grievance of the Plaintiff, is that the Defendant has adopted a
phonetically similar mark 'DOUBLE HORN' along with a label consisting
of two deer in the same colour combination in respect of identical products.
The Plaintiff came to know of the Defendant when it searched the trademark
database and realized that the Defendant had filed two applications which
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
were initially registered but they have since been opposed and the status of
the marks stands changed to 'OPPOSED'.
6. In the said applications bearing no. 5025293 and 4830123, the
Defendant has stated that the marks are 'proposed to be used'. The Plaintiff
has since opposed these marks. The Defendant is also stated to have
wrongfully obtained a 'Search Certificate', under Section 45 of the
Copyright Act, from the Trademark Office for copyright registration of the
label. The Defendant's products have been purchased by the Plaintiff and
the photographs of the products have also been placed on record. Mr.
Bansal, ld. Counsel for the Plaintiff submits that the Plaintiff's products
bearing the mark 'DOUBLE HIRAN' are promoted and sold extensively in
Delhi including by its website www.doublehiranoil.com.
7. The Plaintiff's grievance was, thus, against use of the mark 'DOUBLE
HIRAN' with the device having two deer in an identical colour combination,
label, layout and trade dress. The Court had considered the matter on 21st
April, 2022 and had passed an ad interim injunction order in the following
terms:
"20. A perusal of the competing marks and labels
leaves no doubt whatsoever that the Defendant has
virtually imitated Plaintiff's mark, device, logo, label,
packaging and has copied all the essential
characteristics of the Plaintiff's mark. The difference
between 'DOUBLE HIRAN' and 'DOUBLE HORN' is
hardly decipherable by looking at the product -mustard
oil which is sold in tins. The overall look and feel and
get up of Plaintiff's and Defendant's product are
almost identical. The competing labels of the parties
are set out below:
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
21. In the opinion of this Court, the Plaintiff has
made out a prima facie case for grant of an ex parte ad
interim injunction. The balance of convenience lies in
favour of the Plaintiff. If the said relief is not granted
in favour of the Plaintiff, irreparable injury would be
caused to the Plaintiff. The Plaintiff has a very old
business of selling mustard oil under the mark
'DOUBLE HIRAN'. Since, the products in question are
for human consumption, the quality standard is also a
concern for the Court. The Plaintiff's goodwill could
also be severely impacted by misuse of the mark and
label.
22. Considering the fact that the Defendant's
adoption is very recent, as stated in its own trademark
applications, till the next date of hearing the Defendant
and all others acting for or on its behalf including its
stockists, distributors or retailers are restrained from
manufacturing, selling, offering for sale mustard oil or
any edible oil under the trademark 'DOUBLE HORN'
including the accompanying device/label, and
packaging which is either identically/deceptively
similar to the Plaintiff's mark/label and packaging
'DOUBLE HIRAN' as extracted above. "
8. On the said date, a Local Commissioner was also appointed to visit
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
the premises of the Defendant and make an inventory of the infringing
products. The local commission was executed on 04th May, 2022 and the
Local Commissioner's Report reveals that no infringing products bearing the
mark 'DOUBLE HORN' were found at the Defendant's premises.
9. Ld. counsel appearing for the Defendant today submits that the
Defendant is willing to change the mark, name as also the layout of the label
but would only wishes to continue with the same colour combination, i.e.,
yellow and red, inasmuch as this colour combination is common to the
trade. He also submits that the word 'DOUBLE' is used by a large number
of manufacturers.
10. Mr. Bansal, ld. Counsel submits that as long as the Defendant is
willing to suffer a decree, in terms of the prayer in the suit, the Plaintiff has
no objection. Ld. counsel for the Defendant, has proposed three different
marks 'DOUBLE HEN', 'DOUBLE COCK' and 'DOUBLE KOLHU'. His
client is willing to give an undertaking that he would not use the name/mark
'DOUBLE HORN', the two deer device/label in the same layout and colour
combination as has been impugned in the present suit. He submits that his
client Mr. Abhishek Gupta who is the proprietor of the Defendant firm has
given him instructions to this effect. On the other hand, ld. Counsel for the
Plaintiff submits that the Court ought not to approve any of the marks which
have been suggested by the Defendant.
11. Heard. In the present suit, the Court is concerned with the lis between
the parties relating to the mark 'DOUBLE HORN', and the accompanying
device / label thereof which is identical, and confusingly similar to the
Plaintiff's mark 'DOUBLE HIRAN' and the accompanying device / label
thereof. Insofar as the proposed marks of the Defendant is concerned, the
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
Court cannot look into these marks today inasmuch as the information
relating to the availability of these marks or any grievances of third parties
would be in the realm of speculation. Insofar as the lis before this Court is
concerned, since the Defendant is willing to suffer a decree in terms of the
prayer clause in the suit, no further cause of action would survive.
12. Insofar as damages are concerned, it is the stand of the Defendant that
the Defendant obtained the 'No Objection Certificate' from the Trade Mark
Registry in accordance with law and only, thereafter, adopted the mark
'DOUBLE HORN' and the accompanying label. He, further, submits that
since no seizure was made by the Local Commissioner, it is clear that the
Defendant has not used the mark. At this stage, ld. Counsel for the Plaintiff
does not press the relief of damages and costs.
13. In these facts and circumstances, since the dispute has been amicably
resolved between parties, a decree of permanent injunction is granted
restraining the Defendant, trading in his own name or in the name of the
firm 'M/s HARIOM ENTERPRISES', and all other acting for or on his
behalf including family members, dealers, distributors, etc., from
manufacturing, selling, offering for sale, exporting, distributing or
advertising mustard oil or any other form of edible oil, vanaspati ghee or any
other cognate or allied products under the mark 'DOUBLE HORN' and the
accompanying device or label impugned in the present suit as extracted
above or any other mark, device or label which is identical/confusingly
similar to the Plaintiff's mark, name, label 'DOUBLE HIRAN' device or
label of two deer.
14. The Defendant shall withdraw its trademark applications 5025293,
4830123 for the impugned mark/label and the copyright application within a
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
period of two weeks upon which the office of the CGPDTM shall pass
orders in accordance with law within four weeks thereafter.
15. The suit is decreed in the above terms. All pending applications are
disposed of. The decree sheet be drawn up accordingly.
16. It is made clear that the Court has not expressed any opinion on any of
the proposed marks which the Defendant wishes to adopt.
17. Let the present order be intimated by the Registry for compliance to
the Office of CGPDTM through email [email protected]
18. In view of the fact that the parties have resolved their disputes at the
initial stage full court fee is directed to be refunded through counsel in view
of the judgment of the ld. Division Bench in Nutan Batra v. M/s Buniyaad
Associates, 2018 (255) DLT 696.
PRATHIBA M. SINGH
JUDGE
OCTOBER 6, 2022
dj/sk
Signature Not Verified
By:DEVANSHU JOSHI
Signing Date:10.10.2022
17:04:42
