M/S Mittal Oil Mills Pvt. Ltd vs M/S Parwati Oil Mills
2022 Latest Caselaw 1939 Raj/2

       HIGH COURT OF JUDICATURE FOR RAJASTHAN
                   BENCH AT JAIPUR

           D.B. Civil Miscellaneous Appeal No. 142/2020

M/s Mittal Oil Mills Pvt. Ltd., H-1-87 To 94, Riico Industrial Area,
Kekri, District Ajmer Represented Through Its Director Shri
Mahaveer Prasad Mittal Son Of Shri Ratan Lal Ji Mittal , R/o
Kekri, Tehsil Kekri, District Ajmer, Rajasthan
                                                                  ----Appellant
                                   Versus
M/s Parwati Oil Mills, Through Proprietor Shri Bhagwan Das
Harwani, Parao, Ajmer, Rajasthan.
                                                                ----Respondent

For Appellant(s) : Mr. R.N. Mathur, Senior Advocate assisted by Mr. Shovit Jhajharia, Advocate For Respondent(s) : Mr. Anirudh Tyagi, Advocate for Mr. Kapil Prakash Mathur, Advocate

HON'BLE MR. JUSTICE PRAKASH GUPTA HON'BLE MR. JUSTICE PANKAJ BHANDARI

Judgment

JUDGMENT RESERVED ON :: 18/02/2022 JUDGMENT PRONOUNCED ON :: 04/03/2022

(PER: PANKANJ BHANDARI, J.)

1. The appellant has preferred the instant appeal aggrieved by

the judgment and order dated 16.11.2019 passed by the

Commercial Court, Ajmer, in Civil Miscellaneous Application

No.34/2019 (CIS No.18/2019) titled as M/s. Mittal Oil Mills Pvt.

Ltd. Versus M/s. Parwati Oil Mills whereby temporary injunction

application under Order 39 Rule 1 and 2 read with Section 151

CPC filed by the appellant was partly rejected.

2. Briefly stated the facts of the case are that the appellant filed

a civil suit along with an application for injunction praying therein

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that the respondent be restrained from using the name/trademark

"POSTMAN". It was contended in the application that the appellant

- Company is engaged in the business of manufacturing and

selling edible oils like mustard oil, groundnut oil etc. under the

name POSTMAN, POSTMAN MUSTARD OIL AND DEVICE OF

"POSTMAN", which is duly registered under the Trademark Act. It

was also mentioned in the application that it had come to the

knowledge of the appellant that the respondent is conducting

business of edible oils in the name of "Parwati Postman Plus". It

was mentioned that the use of the device "POSTMAN" in "Parwati

Postman Plus" is creating a situation of confusion/doubt in the

mind of the consumers, which in turn causes legal infringement,

passing off and injury to the appellant and because of sub-

standard quality of the respondent's product. It is contended that

the goodwill of the appellant's name is being harmed along with

incalculable financial loss. The respondent in their reply raised

preliminary objection that the trademark of the appellant was

given only for mustard oil and not for other edible oils and that

both the trademarks are different and the business carried on by

both is also different. The learned Court below while partly

allowing the temporary injunction application directed the

respondent not to manufacture mustard oil in the name of

"Parwati Postman Plus", aggrieved by which, the present appeal

has been filed before this Court.

3. It is contended by Mr. R.N. Mathur, Senior Advocate, assisted

by Mr. Shovit Jhajharia, appearing for the appellant that

"POSTMAN" is a registered trademark of the appellant. The

appellant and the respondent both are dealing with the edible oil.

Use of term "POSTMAN" in "Parwati Postman Plus" creates

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confusion in the mind of the consumers. The respondent -

Company has not got its name registered with the trademark

authorities and use of word "POSTMAN" tantamounts to passing

off and infringement of the appellant's trademark. Learned Senior

Counsel has placed reliance on the judgment of the Apex Court in

Satyam Infoway Ltd. Versus Siffynet Solutions (P) Ltd.: (2004) 6

SCC 145 wherein dispute pertains to use of "Siffynet" and the

trademark was registered in the name of "Sify". The respondent

therein started using word "Siffynet". The Apex Court held that the

names were phonetically similar and the Apex Court came to the

conclusion that the respondent was seeking to cash in on the

appellant's reputation as a provider of service on the internet.

Reliance is also placed on Heinz Italia & Anr. Versus Dabar India

Ltd.: (2007) 6 SCC 1 wherein the Apex Court has held that the

dispute pertained to use of the word "Glucose" in "Glucose-D",

which was similar to the registered trademark "Glucon-D" of the

appellants. The Court held that in the case of passing off action,

the similarities rather than dissimilarities have to be taken note of

by the Court and the principle of phonetic similarity cannot be

ignored. In Renaissance Hotel Holdings Inc. Versus B. Vijaya Sai &

Ors.: Civil Appeal No.404 of 2022, it was held that the

appellant - plaintiff's trademark "Renaissance" is registered for

entries, which dealt with hotels and hotel related services and

goods and respondent-defendant's mark and business name "Sai

Renaissance" was also being used in relation to similar services. It

was held that the words are phonetically as well as visually similar.

The Court held that a case of infringement was made out. Reliance

is also placed on Dhariwal Industries & Ors. Versus M.S.S. Food

Products: (2005) 3 SCC 63.

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4. Learned counsel appearing for the respondent contends that

the appellant's trademark was registered only for mustard oil and

the Court below has restrained the respondent for using "Parwati

Postman Plus" for mustard oil and therefore, the judgment and

order passed by the Court below cannot be said to be illegal.

Learned counsel has placed reliance on M/s. Nandhini Deluxe

Versus M/s. Karnataka Co-operative Milk Producers Federation

Ltd.: Civil Appeal Nos.2937-2942 of 2018 decided by the Apex

Court on 26.07.2018.

5. We have considered the submissions.

6. Admittedly, the word "POSTMAN" is a device, which is

registered with the trademark authorities. The appellant is dealing

with edible oil and the respondent, who is also dealing with edible

oil, intends to use the word "POSTMAN" with a prefix and suffix,

prefix being "Parwati" and suffix being "Plus". The "POSTMAN" is a

name, which has earned reputation and the use of word with the

prefix and suffix is bound to cause confusion in the mind of the

general public and is clearly intended to avail the benefit of

reputation earned by the appellant.

7. Judgment in M/s. Karnataka Co-operative Milk Producers

Federation Ltd. (supra) on which reliance is placed by learned

counsel for the respondent was a case where Dairy Federation

adopted the mark "Nandhini". The appellant before the Supreme

Court, used the word "Nandhini Deluxe". It was observed by the

Apex Court that though there was a phonetic similarity insofar as

the words NANDHINI/NANDINI are concerned, the trademarks

with logo adopted by the two parties were altogether different.

The manner in which the appellant has written NANDHINI as its

mark was totally different from the style adopted by the

(5 of 6) [CMA-142/2020]

respondent for its mark 'NANDINI'. Further, the appellant has used

and added the word 'Deluxe' and, thus, its mark is 'NANDHINI

DELUXE' and is followed by the words 'the real spice of life'. There

is device of lamp with the word 'NANDHINI'. In contrast, the

respondent has used only one word, namely, NANDINI, which is

not prefixed or suffixed by any word. In its mark 'Cow' as a logo is

used beneath which the word NANDINI is written, it is encircled by

egg shape circle. The Apex Court observed that a bare perusal of

the two marks would show that there is hardly any similarity of

the appellant's mark with that of the respondent when these

marks are seen in totality. The Apex Court also observed that two

marks are not similar. The Apex Court further observed that both

the parties are dealing with different products. In the facts and

circumstances of that case, the Apex Court came to the conclusion

that the appellant has not adopted the trademark to take unfair

advantage of the trademark of the respondent and the use of

'NANDHINI' by appellant in respect of its different goods would not

be detrimental to the purported distinctive character or repute of

the trademark of the respondent. The Court also observed that the

appellant had adopted the trademark in respect of items sold in its

restaurants way back in the year 1989, which was soon after the

respondent had started using the trade mark 'NANDINI'. Thus, the

judgment in M/s. Karnataka Co-operative Milk Producers

Federation Ltd. (supra) does not help the respondent as the case

therein involved dissimilar goods.

8. Admittedly, both the appellant and the respondent are

dealing with the business of edible oil. The trademark "POSTMAN"

device is also registered as a trademark and using the word

"POSTMAN" between "Parwati" and "Plus" intends to harm the

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reputation earned by the appellant and is also intended to gain

from the goodwill earned by the appellant. The intention of using

the word "Postman" by the respondent was clearly to gain benefit

of the goodwill earned by the appellant and therefore, would

amount to passing off.

9. In view of the above discussions, we are of the considered

view that the learned Court below has erred in permitting the

respondent in using "Parwati Postman Plus" for manufacturing of

other edible oil when the Court itself has come to the conclusion

that the trademark of respondent is similar to that of appellant.

The word "POSTMAN" is registered with the appellant and use of

the same in the trademark of "Parwati Postman Plus" is bound to

cause confusion in the mind of the general public and was used by

the respondent only to gain advantage of the goodwill earned by

the appellant. We, therefore, deem it proper to allow the appeal.

Consequently, the application under Order 39 Rule 1 & 2 CPC is

allowed in toto and the appeal is accordingly allowed. The

respondent is restrained from using the word "Postman" in

"Parwati Postman Plus" for any form of edible oil. Order of trial

Court is modified accordingly.

10. All the pending applications stand disposed of.

                                   (PANKAJ BHANDARI),J                                             (PRAKASH GUPTA),J

                                   SUNIL SOLANKI/PS









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