Delhi High Court
Ab Mauri India Private Limited vs Vicky Aggarwal & Ors. on 4 March, 2024
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 810/2022
AB MAURI INDIA PRIVATE LIMITED ..... Plaintiff
Through: Mr. Chander Lall, Sr. Advocate
with Mr. Philip Abraham, Mr. Sanuj Das,
Mr. Manish Kumar and Ms. Ananya Chug,
Advs.
versus
VICKY AGGARWAL & ORS. ..... Defendant
Through: Mr. Amit Sibal, Sr. Advocate
with Mr. Prashant Mehta, Adv. for D-1
Mr. Amit Sibal, Sr. Advocate with Mr.
Raghav Marwaha, Adv. for D-2
Mr. Vidit Gupta, Adv and Mr. Chetan Singh,
Adv for D-3 & D-9
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
J U D G ME N T
% 04.03.2024
I.A. 19498/2022 (under Order XXXIX Rules 1 and 2 of the CPC)
1. The only issue in controversy in the present application, filed
under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure
1908 (CPC) in CS (COMM) 810/2022 is whether the defendants can
use the mark TOWER for dry fruits, specifically, cashew nuts,
almond, walnut, and pistachios, which fall under Class 29 or 30 of the
NICE classification of goods for the purposes of registration of trade
marks.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 1 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
Facts
2. The plaintiff is the proprietor of the following registered
trademarks:
Trade Mark Application Class Goods Status
Number/
Date
TOWER 222079 30 Edible Yeast and Registered
Yeast included in
BRAND 01/05/1964 Class 30.
606483 30 Cakes, cakes gel, Removed
pastry,
10/09/1993 confectionery,
yeast, baking
powder, bread,
bread improver
yeast.
725133 30 Cake mix, cake Removed
powder, cake
04/10/1996 paste
included in class
30.
725134 01 Ingredients in the Removed
preparation of
04/10/1996 cake and bakery
preparations viz
glycerol mono
stearate powder.
725135 30 Ingredients in the Registered
preparation of
04/10/1996 cake and similar
bakery
preparations viz
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 2 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
bakery powder
725136 30 Ingredients in the Registered
preparation of
04/10/1996 cake and similar
bakery
preparations viz
calcium
propionate.
725137 30 Yeast and similar Removed
ingredients in the
04/10/1996 preparation of
cake and similar
bakery
preparations.
725138 30 Gels-emulsifiers Registered
humectants,
04/10/1996 stabilizers and
similar ingredients
in the preparation
of cake and other
bakery
preparation.
725139 30 flavouring agents Removed
in the preparation
04/10/1996 of cake and
similar
bakery
preparation
falling under.
7251341 30 Flavouring agents Registered
in the preparation
04/10/1996 of cake and
similar
bakery
preparation
falling under class
30
725142 30 Food flavouring Registered
agents in the
04/10/1996 preparation of
cake
and similar bakery
preparation falling
under class 30.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 3 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
725143 30 Flavouring agents Registered
in the
04/10/1996 preparation of
cake
and similar bakery
preparation falling
under class 30.
725144 30 Flavouring agents Registered
in the
04/10/1996 preparation of
cake and similar
bakery
preparation falling
under class 30.
725145 30 Cake mix, cake Registered
powder, cake
04/10/1996 paste,
and similar bakery
preparations.
TOWER 2213663 1 Chemical Registered
preparations and
30/09/2011 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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 4 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
C); bread
improver
(enzymes,
emulsifiers, gums,
yeast starters);
dough improvers,
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
butter; butter
30/09/2011 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
preparations made
30/09/2011 from cereals;
bakery products;
bakery mixes;
snack foods; yeast
including dry
yeast,
wet yeast and
block
yeast; yeast
extracts; yeast
products for food;
Signature Not Verified
yeast tablets and
Digitally Signed CS(COMM) 810/2022 Page 5 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
preparations and
06/08/2012 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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 6 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
c); bread improver
(enzymes,
emulsifiers, gums,
yeast starters);
dough improvers,
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
butter; butter
06/08/2012 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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 7 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
preparations made
06/08/2012 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;
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 8 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 9 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
Butter; Butter
06/08/2012 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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 10 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
preparations made
06/08/2012 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;
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 11 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 12 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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 Colorants for Registered
foodstuffs, food
14/09/2017 and beverages;
additives for use
as colorants for
foodstuffs, food
and beverages.
3. In or around January 2013, the plaintiff came to learn of the use,
by Defendant 4, (of which Defendants 1 to 3 are partners) of the mark
TOWER for monosodium glutamate (MSG), citric acid, tartaric acid,
green raisins, camphor, copper sulphate, Hexamine, damar batu and
mercury.
4. The plaintiff, thereupon, addressed a legal notice to Defendant 4
on 30 January 2013, calling on the defendants to restrict the use, by it,
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 13 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
of the mark TOWER to goods falling in class 1 and not expand its use
to goods falling in class 30 or any other related class.
5. Defendant 4 responded thus, to the plaintiff, on 20 March 2013,
and it is this response which forms the crux of the controversy:
"To, Date: 20/03/2013
AB Mauri India (P) Ltd.
Plot No. 218 & 219,
BommasandraJigni 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 offer 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
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 14 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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"
6. Thus,
(i) Defendant 4 recognized the proprietary right of the
plaintiff in the trade mark TOWER in respect of goods falling
in Class 30. Defendant 4 thereby, stood proscribed from using
the mark TOWER in respect of any goods falling in Class 30.
(ii) Defendant 4 undertook not to use the mark TOWER in
respect of any goods other than MSG, citric acid, tartaric acid,
green raisins, camphor and hexamine tablets, in Classes 1 and
29.
(iii) Defendant 4 further undertook not to use the mark
TOWER in respect of any goods or classes of interests to the
plaintiff. This undertaking was specifically not limited to goods
falling in classes 1 and 29.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 15 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
7. The self-imposed proscription on Defendant 4, therefore,
extended to:
(i) all goods and classes of interest to the plaintiff,
irrespective of the class in which they fell,
(ii) all goods in Classes 1 and 29 except MSG, citric acid,
tartaric acid, green raisins, camphor and hexamine tablets and
(iii) all goods in class 30.
8. The plaintiff had, prior to the above communication, filed an
opposition against Application No. 1655205 of Defendant 4 before the
Trade Marks registry, seeking registration of the trade Marks
in class 1 for MSG, citric acid chemicals.
9. A counter statement to the opposition was filed by Defendant 4
on 14 September 2012.
10. Consequent on the above communication dated 20 March 2013
from Defendant 4 to the plaintiff, the plaintiff withdrew the opposition
against Application No. 1655205 of Defendant 4, which was filed
through Defendant 1.
11. In the meanwhile, Vinod Kumar Aggarwal-Defendant 3,
obtained Trade Mark registration No. 1411775 for the word mark
TOWER in Class 1 for "MSG and citric acid chemicals" w.e.f. 6
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 16 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
January 2006. Defendant 3 thereafter assigned registration no.
1411775 in favour of Defendant 1 trading as Defendant 4 vide
assignment deed dated 20 December 2016.
12. The plaint alleges that, in violation of the undertaking contained
in the communication dated 20 March 2013, Defendants 1 to 4 had
applied, both prior to the communication and thereafter, for
registration of the mark TOWER for various categories of goods in
Classes 1, 29 and 30. A tabular statement in this regard is provided in
para 16 of the plaint, thus:
S. Application Applicant Trade Mark Status Class/
No. No. Goods
/Registration
No.
1. 1411775 Vicky TOWER Registered 01;
06/01/2006 Aggarwal Mono sodium
Trading glutamate
Published on As: and citric
01/08/2008 M/s acid,
Hainey chemicals.
Global
2. 1655205 Vicky Opposed by 01;
19/02/2008 Aggarwal Plaintiff on Mono sodium
Trading 29/09/2010 glutamate
Published on As: Withdrawn and citric
01/06/2010 Hainey on acid,
Global 27/01/2015 chemicals
3. 1919463 Vicky Registered 01;
09/02/2010 Aggarwal Mono sodium
Trading glutamate,
Published on As: citric acid
23/03/2015 Hainey chemicals
Global
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 17 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
4. 3063535 Atule Opposed by 30;
28/09/2015 Agarwaal Plaintiff on Spices,
18/09/2019 seasoning,
Published on condiments,
27/05/2019 besan, rice,
wheat flour
5. 3107173 Atule Opposed 29;
26/11/2015 Agarwaal Dry fruits,
dairy
Published on products,
23/09/2019 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
Signature Not Verified
and
Digitally Signed CS(COMM) 810/2022 Page 18 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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 EVERYDA Mono sodium
Y glutamate,
citric acid
chemicals
8. 3618274 Atule TOWER Opposed by 29;
22/08/2017 Agarwaal EVERYDA Plaintiff on Dry fruits,
Y 05/05/2022 snack foods,
Published on 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 Opposed by 01;
22/08/2017 Agarwaal 123 Plaintiff on Mono sodium
15/09/2022 glutamate,
Published on citric acid
23/05/2022 chemicals
10. 3618276 Atule TOWER Objected 29;
22/08/2017 Agarwaal 123 Dry fruits,
dairy
products,
snack foods,
processed or
roasted nuts
Signature Not Verified
and fresh
Digitally Signed CS(COMM) 810/2022 Page 19 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
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 by 01;
22/08/2017 Agarwaal ENJOY Plaintiff on Mono sodium
15/09/2022 glutamate,
Published on citric acid
23/05/2022 chemicals
12. 3618279 Atule TOWER Opposed by 29;
22/08/2017 Agarwaal ENJOY Plaintiff on Dry fruits,
03/11/2020 dairy
Published on products,
13/07/2020 snack foods,
processed or
roasted nuts
& 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 by 29;
Signature Not Verified
08/03/2018 Agarwaal Plaintiff on Dry fruits,
Digitally Signed CS(COMM) 810/2022 Page 20 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
03/05/2022 dairy
Published on products,
17/01/2022 snack foods,
processed or
roasted nuts
and fresh
nuts,
Preserved
or salted
foods, dried
&
cook fruits &
vegetables,
jellies,
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,
candy,
confectionary
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
Signature Not Verified
vegetables,
Digitally Signed CS(COMM) 810/2022 Page 21 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
jellies, jams,
snack foods,
preserved,
fruit sauces,
popcorns and
pickles
17. 4122372 Vicky TOWER Registered 01;
19/03/2019 Aggarwal SPAIN Mono sodium
Trading glutamate,
As citric acid
M/s
Hainey
Global
18. 4347432 Vivan Inc. TOWER Objected 30;
14/11/2019 Partnershi SAFFRON Spices &
p Saffron
Firm
Details:
Atule
Agarwaal
& Vicky
Aggarwal
19. 4914117 Atule TOWER Opposed by 29;
20/03/2021 Agarwaal TANATAN Plaintiff on Dry fruits
& Vicky 19/08/2021
Published on Aggawal
19/04/2021
20. 5042197 Atule Objected 29;
13/07/2021 Agarwaal Fresh Nuts &
& Vicky Dry fruits,
Aggarwal Seeds
Partners
Of Tower
Nuts
21. 5042198 Atule TOWER Opposed by 29;
13/07/2021 Agarwaal NUTS Plaintiff on Dry fruits
& Vicky 31/01/2022
Published on Aggarwal
04/10/2021 Partners
Of Tower
Nuts
22. 5201476 M/S Opposed by 29;
08/11/2021 Tower Plaintiff on Nut & dry
Nuts 14/04/2022 fruits
Published on Partnershi
20/12/2021 p
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 22 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
Firm
Details:
Atule
Agarwaal
&
Vicky
Aggarwal
13. It also merits mention that, at the time when the undertaking in
the form of communication dated 20 March 2013 was addressed by
Defendant 4 to the plaintiff, Defendants 1 to 3 were all partners in
Defendant 4. Applying the principle that a partnership is only a
compendious name for the partners, Defendants 1 to 4 were prima
facie bound by the undertaking contained in the communication dated
20 March 2013.
14. It is in these circumstances that the plaintiff has instituted the
present suit before this Court seeking a restraint against the defendants
from using the mark TOWER for any goods other than classes 1, 29
and 30 which are MSG, citric acid, tartaric acid, green raisins,
camphor and hexamine tablets.
15. The dispute has essentially narrowed down to whether the
defendants can use the said mark TOWER for dry fruits, specifically
cashew nuts, pistachios, almond and walnuts, which fall within Class
29 of the NICE classification.
Rival contentions
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 23 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
16. I have heard Mr. Chander M. Lall, learned Senior Counsel for
the plaintiff and Mr. Amit Sibal, learned Senior Counsel for the
defendants at exhaustive length.
17. Mr. Lall contends that the defendants are completely foreclosed
from using the mark TOWER or seeking registration of the mark
TOWER in any form, in respect of any goods except MSG, citric acid,
tartaric acid, green raisins, camphor and hexamine tablets falling
within Classes 1 and 29. He submits that clause (c), in the
communication dated 20 March 2013, completely forecloses the right
of the defendants to either use the mark TOWER or seek its
registration in respect of any other goods or in any other class. The
right of the defendants to use the mark TOWER, or seek its
registration is, therefore, according to Mr. Lall, confined to six items -
MSG, citric acid, tartaric acid, green raisins, camphor and hexamine
tablets.
18. Without prejudice to this contention, Mr. Lall submits that even
if clause (d) were to be read as expanding the right of the defendants
to seek registration of the mark TOWER to goods other than MSG,
citric acid, tartaric acid, green raisins, camphor and hexamine tablets,
the defendants were nonetheless proscribed from using or seeking
registration of the mark TOWER in respect of goods or classes of
interest of the plaintiff. All goods which fall within the classes in
which the plaintiff has registration of the mark TOWER, according to
Mr. Lall, would be goods of interest to the plaintiff. Accordingly, dry
fruits, such as cashew nuts, almonds, pistachios, walnuts, are also
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 24 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
goods of interest for the plaintiff as they fall within Class 29 of the
NICE classification.
19. Mr. Lall further alleges that, in violation of clause (f) of the
communication dated 20 March 2013, the defendants opposed the
Application No. 2213665 dated 30 September 2011 filed by the
plaintiff for registration of the mark TOWER in Class 30.
20. Mr. Lall further submitted that, though the prayer in the plaint is
widely worded, the only grievance of the plaintiff was with respect to
use, by the defendants, of the mark TOWER, for dry fruits other than
green raisins. He submits that the defendants' contention, on the other
hand, is that a combined reading of clauses (b) and (c) of the
undertaking contained in the communication dated 20 March 2013
entitled the defendants to use the mark TOWER for dry fruits other
than dry raisins provided they were not "goods or classes of interest"
to the plaintiff. He has drawn my attention, in this context, to paras 1
to 3, 12 and 23 of the written statement filed by way of response to the
plaint, which read thus:
"PRELIMINARY OBJECTIONS:
PLAINTIFF AND DEFENDANTS ARE INTO SEPARATE AND
DISTINGUISHABLE GOODS AND PLAINTIFF CANNOT
SEEK TO CLAIM MONOPOLY OVER ALL THE PRODUCTS
IN A SINGLE CLASS
1. It is submitted upon a reading of the Plaint and the
Documents filed also therewith as also of the records of the
Trademark Office, it is apparent that the Plaintiff is involved in the
manufacture and sale of goods limited to yeast,
ingredients/flavouring agents, additives which are used in the
manufacturing of bakery goods products and beverages. Such
Signature Not Verified usage is confined to only some of the products specified in Class 1,
Digitally Signed CS(COMM) 810/2022 Page 25 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
2, 29 and 30. For the purpose of easy reference, such products may
be mentioned as under:
a. yeast, ingredients/flavouring agents in preparation of
cakes, milk products, baking powder, cake mix, cake paste,
flour and preparations made from cereals, etc for Class 30,
b. chemical preparations and substances for use in the food
and beverage industry, additives, etc. in Class 1,
c. milk products, butter, butter blond, cream/pastry
margarine, etc. in Class 29 and
d. colorants for foodstuffs, food and beverages, additives,
etc for Class 2.
Almost all of the above-listed items in which Plaintiff has
registered Trade Marks are used predominantly for the purpose of
baking.
On the other hand, the Answering Defendants are involved in the
import/sale and manufacturing:
a Monosodium Glutamate, Citric Acids, Tartaric Acid in
Class 1,
b. camphor tablets, camphor (not for medicinal use), iso-
borneol tablet, thymol & menthol, burning slab etc. in Class
3,
c. Green raisins, dry fruits, processed or roasted nuts, fresh
nuts, popcorns and pickles in Class 29, and
d. Spices, seasoning, condiments and saffron in Class 30.
2. From the above, it is evident that the Plaintiff and the
Answering Defendants are involved in products which are
completely different and distinct from each other. There is
absolutely no similarity in the goods in which either of the party is
involved. Even the customer base and trade channels of the
Plaintiff and the Answering Defendants is completely different and
there is no commonality between the two.
3. It is submitted that the Plaintiff is involved in additives in
bakery products. The list of products, in Classes 1, 2, 29 and 30 are
not direct food products but additives used in food products. In
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 26 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
fact, as per the own admission of the Plaintiff, it is involved in the
products sold in Business-to-Business (B2B) products. It does not
sell to the end customers directly. On the other hand, the
Defendants are involved in dry fruits, Mono Sodium Glutamate,
Citric Acids, Tartaric Acids, various forms of camphor, saffron,
etc. The goods produced by the Defendants are, in one way or the
other, directly consumed by the end consumer, that is, dry fruits,
monosodium glutamate, tartaric acid, citric acid (chemicals added
in food), various forms of camphor and saffron. Thus, Defendants
are involved in the Business-to-Customer (B2C) model. Even
otherwise, the word marks/trademarks of the Answering
Defendants have been in use openly, continuously and extensively
since 2002 and have thus spent 2 decades in the market. It is also
submitted that there is absolutely no similarity in the products for
which the marks are used by the Plaintiff and the Defendants.
*****
NO VIOLATION OF THE UNDERTAKING DATED 20.03.2013
12. It is submitted that there has been no violation of the
Undertaking dated 20.03.2013. In its notice dated 30.01.2013, the
Plaintiff was only concerned that the Defendant not expand use of
the trademark "Tower" in respect of goods falling in class 30 or
any class related thereto.
*****
23. It is further submitted that the Answering Defendants have
been selling and importing dry fruits in the name of "TOWER"
since 2010-2011. The Answering Defendants have filed a separate
List of Documents wherein the Invoices raised by them since 2010-
2011 have been filed in support of the same."
21. The case that the defendants seek to build is, therefore, that
clause (d) entitled them to use registration of the mark TOWER in
respect of dry fruits other than dry raisins so long as they were not
goods or classes of interest to the plaintiff. According to the
defendants, the products in respect to which the plaintiff held
registration were all bakery products, used in baking. As against this,
dry fruits, contended the defendants, are not bakery products, even if
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 27 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
they may, on occasion, be used in bakery products. They, therefore,
are not goods of interest to the plaintiff.
22. Mr. Lall also points out that, though the communication dated
20 March 2013 was signed by Defendant 4, none of the defendants
could challenge its applicability to them. Though Defendant 2, Atule
Agarwaal, in his written statement, sought to contend that he was not a
signatory to the communication dated 20 March 2013, it could not
bind him, it was not open to him to so contend, as in view of paras 1, 4
and 5 of the opposition dated 27 April 2018, of Defendant 2, to
Application no. 2213665 filed by the plaintiff for registration of the
word mark TOWER in class 30. The said paragraphs read thus:
"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
No. application the
Applicant
1 1655205 1 19/02/2008 HAINEY
GLOBAL
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 28 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
2 TOWER 1411775 1 06/01/2006 MR.VICK
Y
AGGARW
AL
Trading As
:
HAINEY
GLOBAL
3 TOWER 3618273 1 22/08/2017 ATULE
EVERYDA AGARWA
Y AL
4 TOWER 3618275 1 22/08/2017 ATULE
123 AGARWA
AL
5 TOWER 3618278 1 22/08/2017 ATULE
ENJOY AGARWA
AL
10 TOWER 3618276 29 22/08/2017 ATULE
123 AGARWA
AL
11 TOWER 3618274 29 22/08/2017 ATULE
EVERYDA AGARWA
Y AL
12 TOWER 3618279 29 22/08/2017 ATULE
ENJOY AGARWA
AL
13 3107173 29 26/11/2015 ATULE
AGARWA
AL
23. There is obvious merit in Mr. Lall's submission. In the face of
the aforesaid assertion contained in the opposition filed by him to
Application No. 2213665 of the plaintiff for registration of the mark
TOWER, Defendant 2 Atule Agarwaal cannot seek to contend that he
was not bound by the undertaking/communication dated 20 March
2013.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 29 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
24. Mr. Lall also took me through the notice of opposition dated 29
September 2010, whereby the plaintiff opposed application no.
1655205 dated 19 February 2008 of Defendant 1 trading as Defendant
4 for registration of the mark in class 1 for MSG and citric
acid chemicals.
25. Defendant 1 filed its counter statement to the notice of
opposition, following which the plaintiff addressed a cease and desist
notice to the defendant on 30 January 2013. It was this communication
which led to the communication/undertaking dated 20 March 2013,
following which the plaintiff withdrew the opposition filed by it to
Application 1655205 of Defendant 1/Defendant 4.
26. Mr. Lall submits that, in the teeth of the undertaking, Defendant
2 applied, on 28 September 2015, vide application no. 3063535 for
registration of the mark in Class 30 for spices,
seasoning, condiments, besan, rice, wheat flour. The invoices filed in
support of the application, he points out, were significantly invoices
raised by Defendant 4.
27. Thereafter, on 26 November 2015, Defendant 2 Atule Aggarwal
filed yet another Application No. 3107173 for registration of the
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 30 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
device mark in class 29 for 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. User was claimed, by
Defendant 2, of 1 April 2015.
28. Thereafter, on 17 April 2018, Defendant 2 amended his claim of
user from 1 April 2015 to 1 April 2009, obviously so as to pre-date the
undertaking dated 20 March 2013. However, all invoices filed with
the application, points out Mr. Lall, are of 2016-17.
29. Mr. Lall further points out that, in para 8 of the opposition filed
by him to Application no. 2213665 of the plaintiff for registration of
the mark TOWER in class 30, Defendant 2 has averred thus:
"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."
30. There is, therefore, clear admission, by Defendant 2, of the fact
that the marks used by plaintiff and defendants were deceptively
similar to each other and that their being simultaneously used in the
market would create confusion and injure each other's business.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 31 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
Submissions of Mr. Amit Sibal, learned Senior Counsel for the
defendants.
31. Responding to the submissions of Mr. Lall, Mr. Amit Sibal,
learned Senior Counsel appearing for the defendants, submits that,
unlike the products of the plaintiff, in respect of which they hold
registration and which are sold on Business to Business (B2B) basis,
the dry fruits manufactured and sold by the defendants are on Business
to Consumer (B2C) basis and are meant for direct consumption, and
not for use in marketing of bakery products.
32. He submits that the plaintiff has not sought to contend,
anywhere, that it was either doing, or intending to do, any business in
dry fruits, using any trade mark. In that view of the matter, he
submits that the use of the mark TOWER, by his clients, for dry fruits,
cannot be said to be likely to result in any irreparable loss to the
plaintiff, as would justify grant of injunction. Thus, submits Mr.
Sibal, this is essentially a dog in the manger suit.
33. Mr. Sibal further submits that the case argued by Mr. Lall has
nothing to do with the prayers in the plaint. He submits that there is
no prayer, in the plaint, for a restraint against the defendants from
acting in violation of the undertaking/communication dated 20 March
2013. As such, in the absence of any such prayer, the plaintiff cannot,
in oral arguments, seek to enforce the undertaking. The plaintiff has,
therefore, to make out a case of infringement or passing off de hors
the terms of the undertaking.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 32 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
34. I may note, at this juncture itself, that this submission of Mr.
Sibal cannot brook acceptance. A plaint, it is well-settled, has to be
read as a whole. There is clear reference to, and reliance upon, the
undertaking dated 20 March 2013, in the averments contained in the
plaint filed by the plaintiff. The prayers in the plaint have to be seen
in conjunction with the averments contained in the plaint. As such, it
cannot be said that, in seeking to argue for enforcement of the
undertaking dated 20 March 2013, Mr. Lall has travelled beyond the
prayers in the plaint.
35. Mr. Sibal further submits that the plaintiff has no registration in
Class 29 for dry fruits. Nor is there any application for registration of
the mark TOWER, for dry fruits, filed by the plaintiff and pending
with the trade mark authorities. It cannot, therefore, be sought to be
urged, by the plaintiff, that the defendant is infringing the plaintiff's
registered trade mark. Dry fruits, he points out, form an entire
separate category in Class 29 of the NICE classification. It is not the
plaintiff has sought to contend, anywhere, that dry fruits are allied or
cognate to the goods in respect of which the plaintiff holds registration
for the mark TOWER. He submits that dry fruits are used for a
variety of products and preparations, both packed and unpacked, and
are also consumed on their own. There is no document placed on
record by the plaintiff to support any averment of similarity between
the goods in respect of which the plaintiff holds trade mark
registrations and which sold by it, and dry fruits. In this context, he
submits that the plaintiff has merely placed on record 37 invoices and
no other material.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 33 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
36. Mr. Sibal has drawn my attention to the packets of dry fruits
sold by his client, photographs of which have been placed on record
by the plaintiffs with its plaint which clearly indicates that the dry
fruits are sold as such individually packs and not as additives in
bakery products or for use in bakery products. He compares logos of
the plaintiff and the defendants to contend that they are entirely
different and distinct and that there is no chance of confusion in the
market. Besides, submits Mr. Sibal, the plaintiff's goods are sold to
professional bakers, whereas the defendants' goods are sold in the
open market for immediate consumption by consumers, though they
can also be used in bakery and confectionary items. There is,
therefore, neither any likelihood of market confusion nor any attempt
by the defendants to ride on the plaintiff's goodwill. Inasmuch as the
plaintiff's goods are sold to B2B basis, and the defendants' goods are
sold on B2C basis, their channels of trade are also different, thereby
obviating any chance of market confusion whatsoever.
37. In this context, Mr. Sibal has placed reliance on the response of
the plaintiff to Opposition No. 1122751 filed by M/s. Liberty Oil
Mills Ltd to Application No. 2374915 of the plaintiff for the
registration of the trademark in Class 29. In its response to
the said opposition, the plaintiff has contended that there was no
chance of confusion between the plaintiff's mark and the mark of
Liberty Oil Mills Ltd, as the plaintiff's products were mostly sold in
the B2B market. This equally applies, he submits, to the likelihood of
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 34 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
confusion arising out of the use, by the defendants, of the TOWER
mark for dry fruits.
38. The issue of whether goods are allied or cognate, he submits, is
required to be decided on the basis of the nature of goods, the trade
channels and the manner in which they are used. Keeping this factor
in mind, he submits that the impugned use of the mark TOWER, by
the defendants, cannot result in any market confusion whatsoever.
39. If the plaintiff has no objection to the use of the mark TOWER,
by the defendants, for MSG, citric acid, tartaric acid, or even for green
raisins and other such items, which are taste enhancers and the use of
the mark TOWER for such items, by the defendants, is not likely to
result in any market confusion, Mr. Sibal questions as to how the
plaintiff can seek to contend that the use of the mark TOWER, by the
defendants, for dry fruits, is likely to do so.
40. In the absence of any likelihood of confusion, he submits that
no prima facie case for infringement within the meaning of Section
29(2) of the Trade Marks Act can be said to exist.
41. He places reliance, in this context, on the judgment of the
Supreme Court in Nandhini Delux v. Karnataka Cooperative Milk
Producers Federation Ltd1.
1
2018 9 SCC 183
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 35 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
42. Insofar as the averment in para 8 of the notice of opposition
dated 27 April 2018 filed by Defendant 2 Atule Agarwaal against
Application No. 2213665 of the plaintiff for registration of the mark
TOWER in Class 30 is concerned, Mr. Sibal submits that the
averment was apropos Class 30 and would not apply to Class 29.
43. Mr. Sibal also places reliance, in this context, on paras 44 and
47 to 49 of the judgment of the Supreme Court in Vishnudas v. The
Vazir Sultan Tobacco2, para 26 of Nandhini Delux, para 18 of the
judgment of a learned Single Judge of this Court in S. Narendra
Kumar v. Everest Beverages and Foods Industries 3, paras 62, 68 and
69 to 73 of my judgment in FDC Limited v. Faraway Foods Pvt Ltd4,
and the judgment of the Division Bench of the High Court of Madras
in Hatsun Agro Ltd v. M/s. Sri Ganapathy Dairy5.
44. Mr. Sibal has also sought to advance a preliminary objection
that the plaintiff's prayer for injunction is not maintainable in view of
Section 41(h) read with Section 14 of the Specific Relief Act. The
prayer in the suit, he submits, has to be for specific performance in
order for such an application to be maintained. A suit for specific
performance cannot be disguised as a suit for injunction. He relies,
for this purpose, on the judgment of this Court in Mujeeb Rehman v.
Mohd. Nabi6, paras 16 to 20, 22, 24 and 26 to 28 of the judgment of
this Court in Times Internet Ltd v. Alt Digital media Entertainment
2
(1997) 4 SCC 201
3
(2008) 37 PTC 497
4
2021 SCC OnLine Del 1539
5
MANU/TN/1356/2022
6
2017 SCC OnLine Del 11393
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 36 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
Ltd7 and paras 6 to 8 of the judgment of the Supreme Court in Atma
Ram v. Charanjit Singh8.
45. Mr. Sibal submits that there has been no breach of the
undertaking dated 20 March 2013, by the defendants nor is there any
evidence of any detriment having resulted to the plaintiff as a
consequence thereof. Insofar as the withdrawal on 27 January 2015,
by the plaintiff, of the opposition to the defendants' Application No.
1655205 was concerned, Mr. Sibal submits that withdrawal was
almost two years after the undertaking and could not, therefore, be
linked to it. Whether the withdrawal was the consequence of the
undertaking, he submits, is in any case, at best, a matter of trial.
46. Mr. Sibal submits that, if the undertaking dated 20 March 2013
is holistically read, it does not evince any intention of the defendants
to restrict their future use of the TOWER mark only in respect of six
items, MSG, citric acid, tartaric acid, green raisins, camphor and
hexamine tablets. Any other interpretation of the undertaking, he
submits would render the undertaking violative of Section 27 of the
Contract Act, 1872, as an agreement in restraint of trade.
47. Besides, submits Mr. Sibal, grant of any injunction, as sought
by the plaintiff, would be completely opposed to the principles of
equity and good conscience, as the defendants are the only users of the
mark TOWER for dry fruits in Class 29. There is no material to
7
2019 SSC Online Del 11948
8
(2020) 3 SCC 311
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 37 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
indicate that the plaintiff is engaged in the manufacture or sale of dry
fruits or has any interest in the said business. The balance of
convenience would also, therefore, not justify injuncting the
defendants from use of the mark TOWER for dry fruits.
48. Nothing, submits Mr. Sibal, turns on the interrelationship
among Defendants 1 to 3 or their relationship with Defendant 4.
Submissions of Mr. Lall in rejoinder
49. Arguing in rejoinder, Mr. Lall submits that the plaintiff is not
asking the defendants to perform anything under the undertaking so as
to require the plaintiff to file a suit for specific performance. He
submits that he is pleading the existence of undertaking dated 20
March 2013 and the covenants thereof, as estoppel against the
defendants seeking to justify use of the mark TOWER for dry fruits.
He submits that the prayer in the suit is for absolute restraint against
the defendants using the mark TOWER for goods covered by Classes
29 and 30, and not for non-infringing goods. He has drawn attention
to Section 37(2) of the Specific Relief Act read with Section 115 of
the Indian Evidence Act, 1872 and Sections 39, 42 and 49 of the
Specific Relief Act. In view of Section 115 of the Evidence Act, Mr.
Lall submits that it cannot lie to contend that the use of the mark
TOWER, for dry fruits, classifiable in Class 29 of the NICE
classification would not be infringing. He submits that it is not for the
defendants to carve out the goods which would be of interest to the
plaintiff, as envisaged by Clause (d) of the undertaking dated 20
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 38 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
March 2013 and that the discretion in that regard would lie with the
plaintiff.
50. He points out that his prayer for injunction is not predicated
solely on the undertaking and that he has, in his plaint, clearly pleaded
likelihood of confusion and deception if the mark TOWER were to be
used by the defendants for dry fruits.
51. Mr. Lall further pleads promissory estoppel against the
defendants. He submits that, at the time of giving of the undertaking
on 20 March 2013, the defendants only had registration for MSG,
citric acid chemicals. The plaintiff had, prior to the said undertaking,
filed an opposition against trade mark Application No. 1655205 dated
19 February 2008 of the defendants for registration of the
device mark in respect of MSG, citric acid chemicals. It was
consequence on the aforesaid undertaking dated 20 March 2013 that
the plaintiff withdrew the said opposition.
Analysis
52. To my mind, despite the exhaustive submissions advanced at
the bar, the issue in controversy is essentially very simple, especially
given the fact that the Court is presently examining an application
under Order XXXIX Rules 1 and 2 of the CPC.
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 39 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
53. Whether the Court views the matter from the point of view of
the undertaking dated 20 March 2013 or de hors the undertaking from
the point of view of infringement in the context of Section 29(2) of the
Trade Marks Act. It appears to me to be clear that the defendants
cannot be permitted to use the mark TOWER for dry fruits.
54. Insofar the undertaking is dated 20 March 2013 is concerned, I
cannot agree with the manner in which Mr. Sibal would seek to
interpret it. To my mind, it is perfectly clear that, in para (c) of the
undertaking dated 20 March 2013, the defendants clearly and
unequivocally undertook to restrict the use of the mark TOWER,
insofar as Classes 1 and 29 were concerned, only to MSG, citric acid,
tartaric acid, green raisins, camphor, hexamine tablets. Significantly,
none of the defendants has chosen to question the existence of the
undertaking, or the fact that it has been signed on behalf of Defendant
4, at a time when Defendants 1 to 3 were partners of Defendant 4.
55. While examining the issue of the entitlement of the plaintiff to
interim injunction, under Order XXXIX Rules 1 and 2 of the CPC, in
which principles of equity predominate, the defendants cannot be
permitted to resile from the said undertaking. This is all the more so
as, on the basis of the said undertaking dated 20 March 2013, the
plaintiff withdrew its Opposition No. 767486 to Application No.
1655205 of the defendants, for registration of the device
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 40 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
mark for MSG, citric acid chemicals in Class 29. Having,
thus, made the plaintiff act to its detriment, on the basis of the
undertaking held out by them, the defendants cannot seek to turn back
and oppose the attempt of the plaintiff to enforce the undertaking, or
violate the undertaking in any manner.
56. Neither Clause (d) nor clause (f) of the undertaking can, in my
view, dilute the impact of clause (c). In so far as goods in Classes 1
and 29 are concerned, clause (c) unequivocally undertakes that the
defendants would not use the mark TOWER for any goods other than
the six goods mentioned in clause (b), i.e. MSG, citric acid, tartaric
acid, green raisin, camphor and hexamine tablets. There is no dispute
that dry fruits fall within Class 29. The only dry fruits in respect of
which the defendants could use the mark TOWER, were, therefore,
green raisins and none other.
57. Even if one were to interpret clause (d) as expanding the scope
of clause (c) and allowing the defendants to use the mark TOWER for
goods covered by Class 29 other than MSG, citric acid, tartaric acid,
green raisins, camphor and hexamine tablets, but which were not of
interest to the plaintiff, I am in agreement with Mr. Lall that it is for
the plaintiff to decide which goods would be of interest to it. The
defendants cannot presume that dry fruits are not of interest to the
plaintiff. Moreover, dry fruits cannot be treated as completely
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 41 of 43
By:AJIT KUMAR
Signing
Date:09.03.2024 01:30
unrelated to the goods in respect of which the plaintiff possessed
registration in Classes 29 and 30.
58. In conjunction with the above, even if one were to go along
with Mr. Sibal's contention that the present case has to be viewed de
hors the undertaking and from the anvil of Section 29(2) of the Trade
Marks Act, a prima facie case for injunction would nonetheless be
made out in the plaintiff's favour. Section 29(2)(b) of the Trade
Marks Act includes, within the ambit of infringement, the use of any
identical or similar mark, for goods or services which are identical or
similar, in a manner which is likely to result in confusion or
association between the impugned mark and the asserted mark. The
submission of Mr. Sibal that dry fruits are not allied or cognate to the
goods in respect of which the TOWER mark was registered in favour
of the plaintiff, cannot, prima facie, merit acceptance. There cannot
be any dispute about the fact that dry fruits and raisins are routinely
used in bakery products and are also consumables, like bakery
products in respect of which the plaintiff held registration. Both the
products are admittedly classifiable under Class 29 of the NICE
classification.
59. If, therefore, a consumer of an average intelligence and
imperfect recollection were to find that bakery products such as MSG,
citric acid, tartaric acid, green raisin, camphor, hexamine tablets and
dry fruits such as pistachios, walnut, cashew nut and almonds were
being sold using the mark TOWER, there is every likelihood of his, at
the very least, presuming an association between the two. The use of
Signature Not Verified
Digitally Signed CS(COMM) 810/2022 Page 42 of 43
By:AJIT KUMAR
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Date:09.03.2024 01:30
the mark TOWER for dry fruits, by the defendants, therefore also
results in a prima facie case of infringement within the meaning of
Section 29(2)(b) of the Trade Marks Act.
60. Where infringement of trademark is found to exist, immediate
injunction is generally the rule, as held by the Supreme Court in
Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia9. Even otherwise,
as the injunction is only against use, by the defendants, of the mark
'TOWER' for dry fruits and the defendants are for the present entitled
to use it for other products, the considerations of balance and
convenience and irreparable loss would also justify grant of interim
injunction.
Conclusion
61. For all the aforesaid reasons, the plaintiff is entitled, in my
view, to an interlocutory injunction restraining the defendants from
using the mark TOWER, in any form whatsoever for manufacture and
sale of dry fruits, including but not limited to pistachios, walnut,
cashew nuts and almonds.
62. The present application is, therefore, allowed to the aforesaid
extent.
C. HARI SHANKAR, J.
MARCH 4, 2024
dsn/rb
(2004) 3 SCC 90
