Delhi High Court
Vicky Aggarwal & Ors. vs A B Mauri India Private Limited on 9 July, 2024
Author: Vibhu Bakhru
Bench: Vibhu Bakhru, Sachin Datta
$~61
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 09.07.2024
+ FAO(OS) (COMM) 127/2024, CM Nos.36668/2024,
36669/2024 & 36670/2024.
VICKY AGGARWAL & ORS. ..... Appellants
Through: Mr Amit Sibal, Senior Advocate
with Mr Prashant Mehta and Mr
Raghav Marwaha, Advocates.
Versus
AB MAURI INDIA PVT. LTD. ..... Respondent
Through: None.
CORAM:
HON'BLE MR. JUSTICE VIBHU BAKHRU
HON'BLE MR. JUSTICE SACHIN DATTA
VIBHU BAKHRU, J.
1. The appellants (nine in number) have filed the present appeal
impugning a judgement dated 04.03.2024 (hereafter the impugned
judgement) rendered by the learned Single Judge allowing the
application [being I.A. No. 19498/2022] filed by the respondent
(plaintiff in the suit) under Order XXXIX Rules 1 and 2 of the Code of
Civil Procedure, 1908 (hereafter the CPC) in CS (COMM) 810/2022
captioned A.B. Mauri India Private Limited v. Vicky Aggarwal &
Others.
2. The respondent (hereafter referred to as the plaintiff) had filed the
above-mentioned appeal, inter alia, seeking a decree of permanent
injunction restraining the appellants (arrayed as defendants in the suit)
from infringing or passing off the plaintiff's registered trade mark
'TOWER' and other formative marks. The plaintiff had also sought a
decree for rendition of accounts or in the alternative damages quantified
at ₹2,00,00,000/-
3. The appellants were allegedly using the trade mark 'TOWER' in
connection with the following products; (i) Monosodium Glutamate,
Citric Acid and Tartaric Acids in Class 1; (ii) camphor tablets, camphor
(not for medicinal use), iso-borneol tablets, thymol & menthol, burning
slab etc. in Class 3; (iii) green raisins, dry fruits, processed or roasted
nuts, fresh nuts, popcorns and pickles in Class 29; and, (iv) spices,
seasoning, condiments and saffron in Class 30.
4. The learned Single Judge allowed the plaintiff's application and
has, by the impugned judgment, interdicted the appellants from using
the trade mark 'TOWER' in any form whatsoever for manufacture and
sale of dry fruits including but not limited to pistachio, walnuts, cashew
nuts and almonds.
5. The appellants being aggrieved by the said decision (impugned
judgment) have preferred the present appeal.
FACTUAL CONTEXT
6. Appellant no.1 is an individual and carries on his business under
the name of his proprietorship concern Hainey Global (arrayed as
appellant no.4). He is engaged in the manufacture and trade of products
such as Monosodium Glutamate and camphor etc. Appellant no.3
carries on his business under the name of his proprietorship concern -
Modern Processing Works (arrayed as appellant no.9). Appellant no.6
is a company incorporated on 13.09.2021 under the provisions of the
Companies Act, 2013. Appellant nos.5,7 and 8 are partnership firms
constituted by appellant nos.1 and 2 as partners.
7. The plaintiff claims that it was incorporated on 31.03.1960 as
'Indian Yeast Company'. In the year 1996, it changed its name to
'Burns Philip India Pvt. Ltd.' and in the year 2004 it once again
changed its name to its current name - AB Mauri India Pvt. Ltd. The
plaintiff claims that it is a part of a heritage that spans over 150 years as
the AB Mauri division of Associated British Foods PLC. Associated
British Foods PLC (ABF) of London, United Kingdom is a diversified
international food ingredient and retail group that operates through
various business segments.
8. The plaintiff claims that the AB Mauri division of the said group
has its operations in more than thirty countries.
9. The plaintiff claims that AB Mauri has invested in TOWER
branded products in India, Bangladesh, Bhutan, Nepal and Pakistan
over several years.
10. The plaintiff claims that it is the owner of several registered
trademarks. A tabular statement setting out the trade marks as well as
their current status is set out below:
Trade Mark Application Class Goods Status
Number/ Date
TOWER 222079 30 Edible Yeast and Registered
BRAND 01/05/1964 Yeast included in
class 30.
606483 30 Cakes, cakes gel, Removed
10/09/1993 pastry,
confectionery,
yeast, baking
powder, bread,
bread improver
east.
725133 30 Cake mix, cake Removed
04/10/1996 powder, cake paste
included in class
725134 01 Ingredients in the Removed
04/10/1996 preparation of cake
and bakery
preparations viz.
glycerol mono
stearate powder.
725135 30 Ingredients in the Registered
04/10/1996 preparation of cake
and bakery
preparations viz.
glycerol mono
stearate powder.
725136 30 Ingredients in the Registered
04/10/1996 preparation of cake
and bakery
preparations viz.
glycerol mono
stearate powder.
725137 30 Yeast and similar Removed
04/10/1996 ingredients in the
preparation of cake
and similar bakery
preparations.
725138 30 Gels-emulsifiers Registered
04/10/1996 humectants,
stabilizers and
similar ingredients
in the preparation of
cake and other
bakery preparation.
725139 30 Flavouring agents Removed
04/10/1996 in the preparation of
cake and similar
Bakery preparation
falling under.
7251341 30 Flavouring agents Registered
04/10/1996 in the preparation of
cake and similar
Bakery preparation
falling under class
7251342 30 Food flavouring Registered
04/10/1996 agents in the
preparation of cake
and similar bakery
preparation falling
under class 30.
7251343 30 Flavouring agents Registered
04/10/1996 in the preparation of
cake and similar
bakery preparation
falling under class
7251344 30 Flavouring agents Registered
04/10/1996 in the preparation of
cake and similar
bakery preparation
falling under class
7251345 30 Cake mix, cake Registered
04/10/1996 powder, cake paste,
and similar bakery
preparations.
TOWER 2213663 1 Chemical Registered
30/09/2011 preparations and
substances for use
in the food and
beverage industry;
food and beverage
additives,
preservatives and
ingredients used in
the manufacture of
beverages or
foodstuffs,
including bakery
goods; calcium
propionate;
ascorbic acid
(synthetic vitamin
C); bread improver
(enzymes,
emulsifiers , gums,
yeast starters);
dough 1mprovers,
dough leaveners,
mold inhibitors,
sweeteners,
glucose, starch,
enzymes, organic
and inorganic
acids, flavour
improvers,
nutrients for use
with yeast, raw
salt.
TOWER 2213664 29 Milk products; Registered
30/09/2011 butter; butter blend:
cream/pastry
margarine; bakers
cream; instant
custard powder;
edible fats; edible
oils; oil substitute;
shortening; fat
containing
mixtures for bread
slices; fatty
substances for the
manufacture of
edible fats.
TOWER 2213665 30 flour and Opposed
30/09/2011 preparations made
from cereals;
bakery products;
bakery mixes;
snack foods; yeast
including dry yeast,
wet yeast and block
yeast; yeast
extracts; yeast
products for food;
yeast tablets and
yeast in pill form;
bread improvers
bread pastry;
brioche; pancakes;
biscuits; soy bread;
cakes; cake mixes;
muffin mixes; pies;
sugar
confectionary, flour
confectionery;
custard; fruit slices;
fruit jellies; pastry
dough; bread
dough; stuffing
mix; salt for
cooking; pasta
containing eggs;
baking powder;
edible decorations
for cakes; aromatic
preparations for
food; preparation
for stiffened
whipped cream.
2374913 1 Chemical Registered
06/08/2012 preparations and
substances for use
in the food and
beverage industry;
food and beverage
additives,
preservatives and
ingredients used in
the manufacture of
beverages or
foodstuffs,
including bakery
goods; calcium
propionate;
ascorbic acid
(synthetic vitamin
c); bread improver
(enzymes,
emulsifiers, gums,
yeast starters);
dough 1mprovers,
dough leaveners,
mold inhibitors,
sweeteners,
glucose, starch,
enzymes
organic and
inorganic acids,
flavour
improvers,
nutrients for use
with yeast, raw
salt; releasing
agents; release
agents for use in
baking;
emulsifiers;
chemical
seasonings for food
manufacture.
2374915 29 Milk products; Opposed
06/08/2012 butter; butter blend;
cream/pastry
margarine; bakers
cream; instant
custard powder;
edible fats; edible
oils; oil substitute;
shortening; fat
containing
mixtures for bread
slices; fatty
substances for the
manufacture of
edible fats;
gelatine;
flavourings (other
than essential oils)
for meat, milk and
milk products;
preparations used
as additives for
meat, milk and
milk products;
additives
(nonmedicated)
for foodstuffs;
preparations for use
as dietetic additives
for food for human
consumption;
protein
preparations for use
as additives to
foodstuffs for
human
consumption (other
than adapted for
medical purposes).
2374916 30 flour and Opposed
06/08/2012 preparations made
from cereals; .
bakery products;
bakery mixes; egg
free cake, bread
and bakery mixes;
egg free mixes;
snack foods; yeast
including dry yeast,
wet yeast and block
yeast; yeast
extracts; yeast
products for food;
yeast tablets and
yeast in pill form;
bread 1mprovers;
cake improvers;
cake gels and
conditioners;
bread; pastry;
brioche; pancakes;
biscuits; brownies;
donuts; cookies;
pizza bases; soy
bread; cakes;
sponge; sponge
cakes; cake mixes;
sweet good mixes;
dessert products;
muffins; muffin
mixes; pies; sugar
confectionary;
flour
confectionery;
custard; fruit slices;
fruit jellies; pastry
dough; bread
dough; stuffing
mix; salt for
cooking; pasta
containing eggs;
baking powder;
edible decorations
for cakes; aromatic
preparations for
food; preparation
for stiffened
whipped cream;
non-dairy whip
topping; non-dairy
whipped dessert
toppings and
whipped cream
substitutes; icing;
gels; glazes (food);
flavourings (other
than essential oils)
for foodstuffs, food
and beverages;
preparations used
as additives for
foodstuffs, food
and beverages;
additives
(nonmedicated)
for
foodstuffs;
preparations for use
as dietetic additives
for food for human
consumption;
seasonings; blends
of seasonings;
chemical
seasonings
(cooking) and dry
seasonings; spice
extracts, spice
mixes, spice
preparations, spices
and spices in the
form of powders.
2374919 29 Milk Products; Abandoned
06/08/2012 Butter; Butter
Blend;
Cream/Pastry
Margarine; Bakers
Cream; Instant
Custard Powder;
Edible Fats; Edible
Oils; Oil
Substitute;
Shortening; Fat-
Containing
Mixtures For Bread
Slices; Fatty
Substances For The
Manufacture Of
Edible Fats;
Gelatine;
Flavourings (Other
Than Essential
Oils) For Meat,
Milk And Milk
Products;
Preparations Used
As Additives For
Meat, Milk And
Milk Products;
Additives (Non-
Medicated) For
Foodstuffs;
Preparations For
Use As Dietetic
Additives For Food
For Human
Consumption;
Protein
Preparations For
Use As Additives
To Foodstuffs For
Human
Consumption
(Other Than
Adapted For
Medical Purposes)
2374920 30 Flour and Abandoned
06/08/2012 preparations made
from cereals;
bakery products;
bakery mixes; egg
free cake, bread and
bakery mixes;
egg free mixes;
snack foods; yeast
including dry yeast,
wet yeast and block
yeast; yeast
extracts; yeast
products for food;
yeast tablets and
yeast in pill form;
bread improvers;
cake improvers;
cake gels and
conditioners;
bread; pastry;
brioche; pancakes;
biscuits; brownies;
donuts; cookies;
pizza bases; soy
bread; cakes;
sponge; sponge
cakes; cake mixes;
sweet good mixes;
dessert products;
muffins; muffin
mixes; pies; sugar
confectionary;
flour confectionery;
custard; fruit slices;
fruit jellies; pastry
dough; bread
dough; stuffing
mix; salt for
cooking; pasta
containing eggs;
baking powder;
edible decorations
for cakes; aromatic
preparations for
food; preparation
for stiffened
whipped cream;
non-dairy whip
topping; non-dairy
whipped dessert
toppings and
whipped cream
substitutes; icing;
gels; glazes (food);
flavourings (other
than essential oils)
for foodstuffs, food
and beverages;
preparations used
as additives for
foodstuffs, food
and beverages;
additives
(nonmedicated)
for foodstuffs;
preparations for use
as dietetic additives
for food for human
consumption;
seasonings; blends
of seasonings;
chemical
seasonings
(cooking) and dry
seasonings; spice
extracts, spice
mixes, spice
preparations, spices
and spices in the
form of powders.
TOWER 3635786 2 2 Colorants for Registered
14/09/2017 foodstuffs, food
and beverages;
additives for use as
colorants for
foodstuffs, food
and beverages.
11. The appellants also used the mark 'TOWER' in respect of various
goods falling in Classes 1, 29 and 30 of the NICE classification. The
appellants had also applied for registration of their trade marks in the
said classes. A tabular statement setting out the details of various
trademarks applied for by the appellants and the current status of the
applications is set out below:
S. Application Applicant Trade Mark Status Class/Goods
No. No.
/Registration
No.
1. 1411775 Vicky TOWER Registered 01;
06/01/2006 Aggarwal Mono
Published on Trading sodium
01/08/2008 As: glutamate
M/s and citric
Hainey acid,
Global chemicals.
2. 1655205 Vicky Opposed 01;
19/02/2008 Aggarwal by Plaintiff Mono
Published on Trading on sodium
01/06/2010 As: 29/09/2010 glutamate
M/s Withdrawn and citric
Hainey on acid,
Global 27/01/2015 chemicals
3. 1919463 Vicky Registered 01;
09/02/2010 Aggarwal Mono
Published on Trading sodium
23/03/2015 As: glutamate
M/s and citric
Hainey acid,
Global chemicals
4. 3063535 Atule Opposed 30;
28/09/2015 Agarwaal by Plaintiff Spices,
Published on on seasoning,
27/05/2019 18/09/2019 condiments,
besan, rice,
wheat flour
5. 3107173 Atule Opposed 29;
26/11/2015 Agarwaal Dry fruits,
Published on dairy
23/09/2019 products,
snack foods,
processed or
roasted nuts
and fresh
nuts,
preserved or
salted foods,
dried and
cook fruits
and
vegetables,
jellies, jams,
snack foods,
preserved
fruit sauces,
milk and
milk
products,
popcorns,
edible oils,
ghee,
pickles
and fats in
class-29
6. 3194213 Atule Objected 29;
25/02/2016 Agarwaal Dry fruits,
dairy
products,
snack foods,
processed or
roasted nuts
and fresh
nuts,
preserved or
salted foods,
dried and
cook fruits
and
vegetables,
jellies, jams,
snack foods,
preserved
fruit sauces,
milk and
milk
products,
popcorns,
edible oils,
ghee,
pickles
and fats in
class-29
7. 3618273 Atule TOWER Objected 01;
22/08/2017 Agarwaal EVERYDAY Mono
sodium
glutamate,
citric acid
chemicals
8. 3618274 Atule TOWER Opposed 29;
22/08/2017 Agarwaal EVERYDAY by Plaintiff Dry fruits,
on snack foods,
Published on 05/05/2022 processed or
10/02/2020 roasted nuts
& fresh nuts.
Preserved or
salted foods,
dried &
cook fruits
and jams
snack foods.
Preserved,
fruit sauces,
popcorn
pickles.
9. 3618275 Atule TOWER 123 Opposed 01;
22/08/2017 Agarwaal by Plaintiff Mono
on sodium
Published on 15/09/2022 glutamate,
23/05/2022 citric acid
chemicals
10. 3618276 Atule TOWER 123 Objected 29;
22/08/2017 Agarwaal Dry fruits,
dairy
products,
snack foods,
processed or
roasted nuts
and fresh
nuts.
Preserved
or salted
foods, dried
& cook
fruits &
jams, snack
foods.
Preserved,
fruit sauces
milk & milk
products,
popcorns,
edible oils,
ghee,
pickles
& fats.
11. 3618278 Atule TOWER Opposed 01;
22/08/2017 Agarwaal ENJOY by Plaintiff Mono
on sodium
Published on 15/09/2022 glutamate,
23/05/2022 citric acid
chemicals
12. 3618279 Atule TOWER Opposed 29;
22/08/2017 Agarwaal ENJOY by Plaintiff Dry fruits,
on dairy
Published on 03/11/2020 products,
13/07/2020 snack foods,
processed or
roasted nuts
and fresh
nuts.
Preserved
or salted
foods, dried
& cook
fruits &
jams, snack
foods.
Preserved,
fruit sauces
milk & milk
products,
popcorns,
edible oils,
ghee,
pickles
& fats.
13. 3772601 Atule POWER Opposed 29;
08/03/2018 Agarwaal by Plaintiff Dry fruits,
on dairy
Published on 03/05/2022 products,
17/01/2022 snack foods,
processed or
roasted nuts
and fresh
nuts.
Preserved
or salted
foods, dried
&
cook fruits
&
jams, snack
foods.
Preserved,
fruit sauces
milk & milk
products,
popcorns,
edible oils,
ghee,
pickles
& fats.
14. 3772602 Atule POWER Registered 30;
08/03/2018 Agarwaal Churan,
churan goli,
Published on saunf,
09/07/2018 toffees,cand
y,
confectionar
y
15. 3772603 Atule POWER Objected 01;
08/03/2018 Agarwaal Mono
sodium
glutamate,
citric acid
chemicals
16. 4056891 Atule Objected 29;
15/01/2019 Agarwaal Dry fruits,
snack foods,
processed or
roasted nuts
& fresh
nuts.
Preserved or
salted foods,
dried &
cook fruits
and jams
snack foods.
Preserved,
fruit sauces,
popcorn
pickles
17. 4122372 Vicky TOWER Registered 01;
19/03/2019 Aggarwal SPAIN Mono
Trading sodium
As: glutamate,
M/s citric acid
Hainey
Global
18. 4347432 Vivan Inc. TOWER Objected 30;
14/11/2019 Partnership SAFFRON Spices &
Firm Saffron
Details:
Atule
Agarwaal
& Vicky
Aggarwal
19. 4914117 Atule TOWER Opposed 29;
20/03/2021 Agarwaal TANATAN by Plaintiff Dry fruits
Published on & Vicky on
19/04/2021 Aggawal 19/08/2021
20. 5042197 Atule Objected 29;
13/07/2021 Agarwaal Fresh Nuts
& Vicky &
Aggarwal Dry fruits,
Partners Seeds
Of Tower
Nuts
21. 5042198 Atule TOWER Opposed 29;
13/07/2021 Agarwaal NUTS by Dry fruits
Published on & Vicky Plaintiff on
04/10/2021 Aggarwal 31/01/2022
Partners
Of Tower
Nuts
22. 5201476 M/S Opposed 29;
08/11/2021 Tower by Nut & dry
Nuts Plaintiff on fruits
Published on Partnership 14/04/2022
20/12/2021 Firm
Details
Atule
Agarwaal
&
Vicky
Aggarwal
12. The plaintiff avers that on 29.09.2010 it opposed (by Opposition
No. 767486) an application bearing number 1655205 filed by appellant
no. 4 seeking registration of the trademark in Class 1 for
monosodium glutamate (MSG) and citric acid chemicals.
13. It is the case of the plaintiff that in January 2013 it learned about
the use of the trademark 'TOWER' by appellant no.4 for goods
including MSG, citric acid, tartaric acid, green raisins, camphor, copper
sulphate, Hexamine, damar batu and mercury. Thereafter, by a Cease
and Desist Notice dated 30.01.2013, it called upon appellant no. 4 to
restrict its use of the trademark 'TOWER' in relation to goods falling
in Class 1 and not to expand its use to goods falling in Class 30 or any
other related classes.
14. In response to the aforesaid notice, the appellants undertook not
to use the trade mark 'TOWER' in respect of certain goods. The said
undertaking (hereafter the Undertaking), furnished in terms of the letter
dated 20.03.2013, is central to the controversy in the present appeal and
is set out below:
"To, Date: 20/3/2013
AB Mauri India (P) Ltd.
Plot No. 218 & 219,
Bommasandraligni Link Road,
Bangalore-560 106
Dear Sirs
We are in receipt of your letter dated January 30, 2013.
In consideration of the same, we hereby solemnly undertake as
follows:
a) We recognize and acknowledge the proprietary rights of
A.B. Mauri India (P) Ltd. in the trademark "TOWER" in
respect of goods forming part of class 30 of the Classification
of goods and services under the Trade Marks Act, 1999.
b) We submit that we are using the mark TOWER only in
respect of our goods namely Monosodium Glutamate, Citric
Acid, Tartaric Acid, Green Raisins, Camphor, Hexamine
tablets, which form part of class 1 & 29 of the Classification of
goods and services under the Trade Marks Act, 1999.
c) We submit that we shall restrict the use of TOWER
mark only in respect of our aforementioned goods falling in
class 1 & 29.
d) We undertake that we shall not make, sell or otter for
sale any products, or conduct business or conduct business in
the future under the mark "TOWER" or any other mark similar
mark in relation to goods and classes of interest of A.B. Mauri
India (P) Ltd. including and not limited to Class 1 & 29 goods.
e) We confirm and undertake we have neither filed, nor
shall file any application for the mark "TOWER" or anything
confusingly similar to "TOWER" for any goods and classes of
interest of A.B. Mauri India (P) Ltd. including and not limited
to Class 1 & 29 goods.
f) We undertake that we shall not, nor shall our heirs, assigns,
employees and anybody who has interest in our venture,
oppose any future application for registration or use of
TOWER by A.B. Mauri India (P) Ltd., Inc., its assigns,
employees, licensees etc in India or anywhere else in the world;
This undertaking is signed on this the day herein before
mentioned.
Sd/
M/s Hainey Global"
15. The plaintiff claims that pursuant to the Undertaking, it sent a
letter dated 27.01.2015 and withdrew its opposition (Opposition
No.767486) to appellant no.4's application (Application No.1655205)
for registration of the trade mark in respect of Monosodium
Glutamate, Citric Acid and chemicals in Class 1.
16. The plaintiff instituted the suit [CS(COMM) No.810/2022] being
aggrieved by the appellants using the trademark 'TOWER' and other
deceptively similar marks in respect of various other goods. The
principal dispute relates to the use of the trade mark in respect of dry
fruits including pistachio, walnuts, cashew nuts and almonds. The
plaintiff claims that the use of the trade mark by the appellants infringes
its trade mark 'TOWER' which, it claims, is a well-known trademark.
IMPUGNED JUDGMENT
17. The learned Single Judge, prima facie, found that the use of the
trademarks by the appellants infringes the plaintiff's trademark and is
also in violation of the Undertaking dated 20.03.2013. The learned
Single Judge, thus, concluded that the appellants could not be permitted
to use the trade mark 'TOWER' for dry fruits. The learned Single Judge
rejected the contention that the Undertaking did not cover the use of the
trademark 'TOWER' in respect of dry fruits, as the same were not goods
of interest to the plaintiff. The learned Single Judge observed that
paragraph '(c)' of the Undertaking restricted the use of the trademark
'TOWER' for any goods other than those mentioned in clause '(b)' in
Class 1 and Class 29. Thus, the appellants could not use the trade mark
'TOWER' in respect of goods falling under Class 29 and there is no
dispute that dry fruits fall within the said Class.
SUBMISSIONS
18. Mr. Amit Sibal, learned senior counsel appearing for the
appellants sought to assail the impugned judgment essentially on three
grounds. First, he submitted that the plaintiff is engaged in the business
of products used in baking and therefore, could not interdict the use of
the trade mark 'TOWER' in respect of other goods. He submitted that
the plaintiff does not hold registration of the trade mark 'TOWER' in
respect of dry fruits. Further the plaintiff is also not engaged in selling
such goods. He thus, submitted that there is no possibility of any
confusion as the goods in respect of which the appellants are using the
mark in question, were completely different from those dealt with by
the plaintiff. He further submitted that the channels of sale were also
completely different. Further, he submitted that dry fruits could not be
considered as allied or cognate to the goods dealt with by the plaintiff.
Second, he submitted that the learned Single Judge had erred in
interpreting the Undertaking furnished by appellant nos.1 and 4. He
contended that the Undertaking permitted the use of the trade mark
'TOWER' in respect of goods that were not similar to those dealt with
by the plaintiff.
19. Third, he submitted that the terms of the Undertaking could bind
only appellant nos.1 and 4 and not the other appellants. He submitted
that the learned Single Judge had erred in proceeding on the basis that
appellant no.4 was a firm and appellant nos.2 and 3 were constituent
partners of the said firm. He contended that appellant no.4 was the sole
proprietorship concern of appellant no.1 and the same was
acknowledged by the plaintiff in its replication.
REASONS & CONCLUSION
20. We find no merit in the contentions advanced on behalf of the
appellants. The learned Single Judge had, prima facie, concluded that
a case for infringement was made out under Section 29(2)(b) of the
Trade Marks Act, 1999 (hereafter the Trade Marks Act) . Section 29(2)
of the Trade Marks Act is set out below:
"29. Infringement of registered trade marks
* * *
(2) A registered trade mark is infringed by a person who, not being
a registered proprietor or a person using by way of permitted use, uses
in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the
similarity of the goods or services covered by such
registered trade mark; or
(b) its similarity to the registered trade mark and the identity
or similarity of the goods or services covered by such
registered trade mark; or
(c) its identity with the registered trade mark and the
identity of the goods or services covered by such
registered trade mark, is likely to cause confusion on the
part of the public, or which is likely to have an
association with the registered trade mark."
21. In the present case, there is no dispute that the trademark used by
the appellants in connection with dry fruits is similar to the plaintiff's
trade mark 'TOWER'. However, the appellants contend that Section
29(2)(b) of the Trade Marks Act is not applicable because the goods are
not similar. In terms of Section 29(2)(b) of the Trade Marks Act, use
of a mark similar to a registered trade mark, which is likely to cause
confusion on the part of the public or is likely to indicate association
with the registered trademark because of the similarity of the mark with
the registered trademark and identity or similarity of goods and services
covered by the said trademark would be infringing use. Thus, use of
the trademark similar to a registered trademark in respect of allied or
cognate goods which are likely to cause confusion or indicate
association with the registered trademark, would constitute
infringement of the registered trademark in terms of Section 29(2)(b) of
the Trade Marks Act. The learned Single Judge had rejected the
contention that dry fruits are not allied or cognate to the goods in respect
of which the trade mark 'TOWER' is registered in favour of the
plaintiff. The learned Single Judge had reasoned that dry fruits and
raisins were commonly used in bakery products. Further, both the
products in respect of which the plaintiff's trade mark is registered and
dry fruits fall in the same class - Class 29 of the Nice Classification.
We concur with the said reasoning. Undisputedly, dry fruits are
commonly used in bakery products. It is quite likely that the use of
similar trade marks in respect of bakery products and dry fruits would
lead to a presumption of association between the marks viewed from a
standpoint of a person of average intelligence and imperfect
recollection.
22. It is also relevant to refer to paragraph 8 of the opposition filed
by appellant no.2 to the plaintiff's application (Application
no.2213665) for registration of the trade mark 'TOWER' in Class 30.
The same is reproduced below:
"8. That the trade mark of the applicant TOWER is in all
essential respects identical with or deceptively similar to the
opponents trade mark. The goods are also of the same
description and if the applicants are allowed to use or register
their mark, there may be deception of the public and injury to
the opponents trade and business."
23. It is seen that the appellants had acknowledged that the goods in
respect of which appellant no.2 was using the trade mark was similar to
the products dealt with by the plaintiffs.
24. The contention that the Undertaking did not prohibit use of the
trade mark 'TOWER' in respect of dry fruits is also unpersuasive. In
terms of Clause '(c)' of the undertaking, the use of the trademark
'TOWER' was confined to only those products as mentioned in Clause
'(b)' viz. (i) Monosodium Glutamate; (ii) Citric Acid; (iii) Tartaric
Acid; (iv) Green Raisins; (v) Camphor; and, (vi) Hexamine tablets. The
person giving the Undertaking had also undertaken not to sell or offer
for sale any products or conduct any business in the future under the
trade mark 'TOWER' or any other similar mark "in relation to goods
and classes of interest of A.B. Mauri India (P) Ltd. including and not
limited to Class 1 & 29 goods". Thus, Clauses '(b)', '(c)' and '(d)' of
the Undertaking read conjunctively clearly indicate that the
Undertaking expressly covered all goods under Classes 1 and 29, save
and except those specified in Clause '(b)' of the Undertaking.
25. The learned Single Judge did not accept the contention that dry
fruits were excluded by virtue of Clause '(d)' of the Undertaking on the
ground that the question as to which product under Class 29 would be
covered by the "Classes of the interest" of the plaintiff is a matter to be
considered by the plaintiff.
26. The contention that no appellant, other than appellant no.1
(appellant no.4), is bound by the Undertaking is also prima facie
untenable. The record clearly indicates that appellant nos. 2 and 3 were
held out as constituents of appellant no.4. Thus, notwithstanding that
appellant no.4 may be the sole proprietorship of appellant no.1, the
record indicates that appellant no.2 also himself held out as appellant
no.4. The plaintiff in its plaint had set out the extracts of the submissions
filed by appellant no.2 before the Trade Mark Registry under cover of
its letter dated 05.05.2022. The said extracts are set out below:
"a) Cited mark 01 belongs to the Applicant itself
It is submitted that the first cited mark under application nos.
1411775 in the name of Mr. Vinod Kumar Aggarwal belongs to
the Applicant itself as Mr. Vinod Kumar Aggarwal, Mr. Vicky
Aggarwal and Mr. Atule Agarwaal are partners of the same firm
named as Hainey Global.......
b) Cited mark 02, 03 and 04 - Already settled between
parties to co-exist:
The second, third and fourth cited mark TOWER under
application No. 2213663, 2374913 and 2374917 filed by AB
Mauri India Pvt. Ltd. are not in conflict with the present
application as the present applicant has entered into a settlement
agreement with the cited applicant AB Mauri and the present
application is filed as per the terms and conditions mentioned in
the agreement. Hence, the marks can co-exist in view of the
settlement. The settlement deed and various other documents
filed by the attorneys (AZB Partners) of the cited applicant AB
Mauri Pvt. Ltd. are filed herewith as Annexure - B......"
27. It is not disputed that such a statement was made to the Trade
Marks Registry. Undisputedly, appellant nos.1,2 and 3 are closely
related (appellant no.3 is the father of appellant nos.1 and 2). The
appellants do not claim that appellant no.3 was not aware of the
representations made by appellant no.2.
28. The learned Single Judge had also noted appellant no.2's
opposition dated 27.04.2018 to the plaintiff's application for
registration of the trade mark in Class 30. The relevant extract from
appellant no.2's opposition as set out in the impugned judgement is
reproduced below:
"1. That the Opponents are engaged in the business of
manufacturing and marketing of various goods including goods
in class 30 (hereinafter referred to as the said goods) and have
been carrying on their business under the name and style of M/s
Hainey Global, 15, Deepali Enclave, Pitam Pura, Delhi - 110
034.
*****
4. That the Opponent is the registered proprietor of the trade
mark TOWER under registration no. 1411775 dated
06/01/2006 in class 01 and the said registration is still valid and
subsisting.
5. That the Opponent thereafter has filed various applications
for registration of its various TOWER formative trademarks
and the details of which are as under: -
S.No. Trademark Application Class Date of Name of the
No. application applicant
1 1655205 1 19/02/2008 HAINEY
GLOBAL
2 TOWER 1411775 1 06/01/2006 MR. VICKY
AGGARWAL
Trading As:
HAINEY
GLOBAL
3 TOWER 3618273 1 22/08/2017 ATULE
EVERYDA AGARWAL
Y
4 TOWER 3618275 1 22/08/2017 ATULE
123 AGARWAL
5 TOWER 3618278 1 22/08/2017 ATULE
ENJOY AGARWAL
10 TOWER 3618276 29 22/08/2017 ATULE
123 AGARWAL
11 TOWER 3618274 29 22/08/2017 ATULE
EVERYDA AGARWAL
Y
12 TOWER 3618279 29 22/08/2017 ATULE
ENJOY AGARWAL
13 3107173 29 26/11/2015 ATULE
AGARWAL"
29. In view of the above, prima facie, we are unable to accept that
the appellants would not be bound down by the Undertaking.
30. We are unable to accept that the learned Single Judge has
exercised its discretion "arbitrarily, or capriciously, or perversely" or
has "ignored settled principles of laws regulating grant or refusal of
interlocutory injunction". Thus, on the anvil of the standard as set out
by the Supreme Court in Wander Ltd. & Anr. v. Antox India Pvt. Ltd.1,
no interference in the impugned judgment is warranted.
1990 Supp SCC 727
31. The appeal is unmerited and is, accordingly, dismissed.
VIBHU BAKHRU, J
SACHIN DATTA, J
JULY 9, 2024
'gsr'
