High Court of Punjab and HaryanaFAO/4739/2016allowed

Man Mohan Sharma v. Manjit Singh

2016-12-22Mr. Justice Augustine George Masih64 pages

IN THE HIGH COURT OF PUNJAB AND HARYANA AT

CHANDIGARH

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are phonetically, structurally and visually similar. The label is also of similar type. By simply putting word 'A' in place of 'U' or by putting word 'Wah' before mark 'MOHAN'S' and that too in small font is not going to make any difference. The consumer is going to be deceived by the appearance of trade mark MOHAN'S and confuse the same with goods of the plaintiff with trade mark MOHUN'S. The two marks

are so deceptively similar that a common man will not be able to make distinction between the two. All these circumstances make the trade mark of the defendant to be deceptively similar to the trade mark, word, label and device of the plaintiff. When plaintiff claims the user of the mark MOHUN'S since 1978 which is also supported by documentary evidence, claim of user by defendant since 1990 does not hold ground and it cannot be said that the trade mark registered in the name of plaintiff is invalid. 26.

Accordingly, a good primaEfacie case is made out in favour of the plaintiff. The balance of convenience also lies in favour of the plaintiff. The plaintiff will suffer irreparable loss and injury if the defendant is allowed to continue to sell his goods with the trade mark MOHAN'S', which is deceptively similar to the trade mark of the plaintiff. Thus, the application under Order 39 Rules 1 and 2 Civil Procedure Code filed by the plaintiff is allowed..." A =

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" Whether the plea of invalidity of registration of the plaintiff's trade mark is deemed to have been abandoned, and, if yes, neither do I have to examine the issues raised, as regard the validity of registration of plaintiff's trade mark nor the argument that the trial court found the said plea to be prima facie tenable, would survive. And, if not, whether the trial court, indeed, found the plea of invalidity to be prima facie tenable and stayed the suit?

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( "29. Hence, keeping the legal principles as discussed above in mind, it is concluded that in a suit for infringement of a trade mark, the applicant cannot ask for a relief of the stay of the suit until he fulfills the conditions stated in 124(1) of the Act. If the rectification proceeding are not pending the institution of the suit, it is obligatory on part of the applicant to follow the provision laid down under section 124(1)(ii) of the Act in order to initiate rectification proceedings before the Appellate Authority. In case he fails to adhere to the same and yet initiates rectification proceedings, then he will not be entitled to the relief of stay of the suit under section 124 of The Trade Mark Act, 1999."

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(3) Where the civil court based on its prima facie assessment states the the invalidity plea is not tenable or where the litigant does not approach the IPAB within the time granted (i.e when the court holds the plea to be prima facie tenable) the only consequence is deemed abandonment of the invalidity defense in the infringement suit. However, access to IPAB to invoke its exclusive jurisdiction to test the invalidity of a trademark registration is not precluded or barred in any manner whatsoever."

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( "5&< "124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc. E (1) Where in any suit for infringement of a trade markE (a) the

that registration of the plaintiff's trade mark is invalid; or (b) the

under clause (e) of subEsection (2) of section 30 and the

the invalidity of registration of the defendant's trade mark, the court the suit (hereinafter referred to as the court), shall,E (i) if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark

before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff's or defendant's trade mark is prima facie tenable, raise an regarding the same and adjourn the case for a period of three months from the date of the in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in clause(b)(ii) of subEsection (1) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in subEsection (1) or subEsection (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction, directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit."

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2if any proceedings for rectification of the register in relation to the plaintiff's or defendant's trade mark "are pending" before the Registrar or the Appellate Board. < "

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Nasiruddin and Ors. v. Sita Ram Agarwal, AIR 2003 SC 154305 ". "The court's jurisdiction to interpret a statute can be invoked when the same is ambiguous. It is well known that in a given case the court can iron out the fabric but it cannot change the texture of the fabric. It cannot enlarge the scope of legislation or intention when the language of provision is plain and unambiguous. It cannot add or

subtract words to a statute or read something into it which is not there. It cannot reEwrite or recast legislation..." ;<

Nelson Notis .Union of India0AIR 1992 SC 19810 3 :5&!(%"#/(" & "8.

The language of SubErule (4) of Rule 10 is absolutely clear and does not permit any artificial rule of interpretation to be applied. It is well established that if the words of a statute are clear and free from any vagueness and are, therefore, reasonably susceptible to only one meaning, it must be construed by giving effect to that meaning, irrespective of consequences. The language of the subErule here is precise and unambiguous and, therefore, has to be understood in the natural and ordinary sense. As was observed in innumerable cases in India and in England, the expression used in the statute alone declares the intent of the legislature. In the words used by this Court in State of Uttar Pradesh v. Dr. Vijay Anand Maharaj , when the language is plain and unambiguous and admits of only one meaning, no question of construction of a statute arises, for the act speaks for itself. Reference was also made in the reported judgment to Maxwell stating:

To construction must not, of course, be strained to include cases plainly omitted from the natural meaning of the words."

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" #";0 B( <(&52Whether the civil court could go into the validity/invalidity of a registered mark, albeit the exclusive jurisdiction to rule upon the validity/invalidity of registration of a trade mark, under Section 47/57 of the Act rest with the Registrar or the IPAB? =

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Lupin Ltd. and another.Johnson and Johnson and another0 A,=/0 (&& @ @#573 * /(" & "59. In a nutshell, our conclusions are as under: (1)&(2) xxx xxx xxx (3) A challenge to the validity of the registration of the trade mark can finally succeed only in rectification proceedings before the Intellectual Property Appellate Board. However, there is no express or implied bar taking away the jurisdiction and power of the Civil Court to consider the challenge to the validity of the trade mark at the interlocutory stage by way of prima facie finding." ;<

Marico Limited . Agro Tech Foods Limited (%"0 .

@ & 3 * /(" & "21. The following conclusions thus emerge:E (i) & (ii) xxx xxx xxx (iii) A civil court in a suit filed for infringement of a registered trade mark is entitled (if there is no earlier judgment which has achieved finality in cancellation proceedings) to consider the validity of registration for the purpose of passing an interlocutory order including of grant or refusal of an interim injunctionE once the objection as to

invalidity of registration is taken up in the pleading/written statement."

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" "9. Absolute Grounds for Refusal of Registration. E (1) The trade marksE (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;

(b)

which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered."

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The mark submitted for registration is open to objection under paragraphs (a), (b), (c), (d), & (e) of Section 9(1) of the Trade and Merchandise Marks Act, 1958. The mark does not also appear to be capable of distinguishing the goods specified in the Application for registration in part B of the register. The objections arise because personal name is not distinctive.

The mark submitted for registration is open to objection under Section 11/13/18/72 of the Act because 5.

The mark submitted for registration is identical with or deceptively similar to the registered trade mark (s)

and/or mark (s) in prior pending application. Search Report is enclosed herewith."

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"Abandonment.E Where, in the opinion of the Registrar, an applicant is in default in the prosecution of an application filed under this Act or any Act relating to trade marks in force prior to the commencement of this Act, the Registrar may, by notice require the applicant to remedy the default within a time specified and after giving him, if so, desired, an opportunity of being heard, treat the application as abandoned, unless the default is remedied within the time specified in the notice."

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"Whether the trade mark of the plaintiff is an entry that wrongly exists on the register of Trade Marks and is, thus, liable to be removed/rectified/cancelled? And/or trade mark registry ought to have rejected/abandoned the impugned registration?

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Skyline Education Institute (India) Private Ltd. (supra)0 & "18. ... It has not been disputed on behalf of the appellant that the word `Skyline' is being used as trade name by various companies / organizations / business concerns and also for describing different types of institute/institutions. The voluminous record produced by the respondents before this Court shows that in India as many as 117 companies including computer and software companies and institutions are operating by using word `Skyline' as part of their name/nomenclature. In United States of America, at least 10 educational/training institutions are operating with different names using `Skyline' as the first word. In United

Kingdom also two such institutions are operating. In view of this, it is not possible to agree with the learned counsel for the appellant that the Skyline is not a generic word but is a specific word and his client has right to use that word to the exclusion of others."

# &"&70

Goenka Institute of Education and Research0 .

@ &( "24(iii)... It has been found on record that the following institutions have been operating in different parts of India using the word 'Goenka' in their trademark or trade name viz the name of the institution and which are as under:E (a) Goenka College of Commerce, Kolkatta since 1951 (P.388 of appeal) (b) Goenka Vidya Mandir, Pilani, since 1983 (P.397 of appeal), and (c) Goenka Sanskrit Mahavidyalaya, Banaras, since 1957 (P.403/405 of appeal) We, therefore, prima facie find that there is merit in the contention of the appellant that various other institutions have been using the word 'Goenka' as part of their trademark and trade name even prior to the use of the word 'Goenka' by the respondents as part of their trade mark and, therefore, it cannot be said that 'Goenka' has become distinctive or acquired a

secondary meaning so far as the respondents are concerned. Therefore, neither the appellant nor the respondents can be said to be the first user or prior user for the purposes of becoming exclusive owners of the word 'Goenka' to prevent others from using 'Goenka'. In fact, the number of institutions run by different parties may, after trial, lead to the word 'Goenka' being publici juris. Publici Juris, Para 6(iii) 25."

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" #";O "34. Saving for Vested Rights. E Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date priorE

(a) to the use of the first mentioned trade mark in relation to those goods or services be the proprietor or a predecessor in title of his; or (b) to the date of registration of the first mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the first mentioned trade mark."

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That the plaintiff is engaged in the business of manufacturing & selling of various kinds of

(hereinafter referred to as the 'plaintiff's aforesaid goods') since 1975.

That in the year of 1975, the plaintiffEfirm adopted a distinctive Trade Mark ′ MOHUN'S ′ (in label Form) and subsequently, in the year of 1978, the plaintiffEfirm adopted Trade Mark ′ MOHUN'S ′ in another distinctive label, and thenceafter, the plaintiff has been using a Trade Mark ′ MOHAN'S ′, in respect of the aforesaid goods, honestly, bonafidely and regularly, and has thus made it popular & distinctive among the members of consuming/trading/general public at large.

xxxx 12.

That in proof of sales of the aforesaid goods,

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( by the plaintiff, to the buyers including especially of 'Indian Railway' during the past years, the photocopies of few invoices

and/or such other relevant documents are filed herein, duly marked as )* + ,-+ ../0 13.

That in proof of purchase of rawEmaterials during the past years, photocopies of some readilyEavailable purchaseE bills are filed herein, duly marked as )* + ... + ..10

14.

That the aforesaid Trade Mark has extensively been advertised/publicized by the plaintiff by means of calendar, hand bills, pamphlets, stickers, labels and/or by such other media, for which, considerable expenses have been incurred during the past years. The photocopies of some readilyE available printingEbills are filed herein, duly marked as )* + ..2+ ..30( %%" &70 %" 5(

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@ & "14. Thus, the law is pretty well settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents.

The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry did not prove its user by the persons in whose names the mark was registered and was irrelevant for the purposes of deciding the application for interim injunction unless evidence had been led or was available of user of the registered trade marks." = ( 0 &7

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Whether registration of a mark by itself from a prior date, in the absence of any proof of its actual usage, shall prevail upon the prior and actual user of a trade mark?EC 0 %("%"

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... While the case of the PlaintiffERespondents is furthered by the fact that their user commenced prior to that of the DefendantEAppellant, the entirety of the Section needs to be taken into consideration, in that it gives rights to a subsequent user when its user is prior to the user of the proprietor and prior to the date of registration of the proprietor, whichever is earlier. In the facts of the case at hand, the DefendantE Appellant filed for registration in 1992, six years prior to the commencement of user by the PlaintiffERespondents. The DefendantEAppellant was, thus, not prevented from restraining the PlaintiffERespondents' use of the similar mark PROFOL, but the intention of the Section, which is to protect the prior user from the proprietor who is not exercising the user of its mark prima facie appears to be in favour of the PlaintiffE Respondents.

Section 47 of the Act is in the same vein and statutory strain inasmuch as it postulates the possibility of a registered mark being taken off the register on an application being made by any aggrieved person, inter alia, on the ground that for a continuous period of five years and three months from the date on which the trademark was registered, there was no bona fide use thereof. In the case in hand, prima facie, it appears that for over five years after a registration application was made by the DefendantE Appellant, the mark was not used.

... The question to examine, then, would be whether prior user would have to be anterior to the date of application or prior to the user by the DefendantEAppellant. In other words, the question before the Court would remain whether the situation on the date of application for registration alone would be relevant, or whether the developments in the period between this date and the date of grant of registration would have any bearing on the rights of the parties. All these considerations will be cast into a curial cauldron to be appreciated by the Court before which the suit is being contested. In these premises, we cannot conclude that a prima facie case has not been disclosed by the PlaintiffERespondents."

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("" ( " &( "13. Taking up the aspect of honesty in adoption we are clearly of the view that the adoption by the appellant by the word 'Goenka' in the name of its institution is honest. This is because the Trust Deed is of 1990, well before the 'G.D. Goenka Public School' was started in 1994 and that the name of the trustees of the trust have their surnames 'Goenka'. The institution 'Mohini Devi Goenka Mahila Mahavidyalaya' was started in 1995, in the District of Sikar in Rajasthan (well away from Delhi) just one year after the respondents started 'G.D. Goenka Public School'. In one year it is not possible that 'G.D. Goenka Public School' became so famous that its name and fame spread well beyond Delhi into Sikar District of Rajasthan, that it can be said that appellant would have liked to copy the same to pass off its institute as that of the respondents. Nothing so categorical and clinching has been placed on record by the respondents to this effect. Also as stated above the appellant

had a valid reason to us 'Goenka' in their institution in 1995 as the trustees were Goenkas themselves. So far as use of 'Goenka' in the name 'Goenka Public School' in the year 2000 is concerned the arguments as stated in favour of the appellant as stated above will hold good and additionally also that the respondents had till 2000 admittedly called their school 'G.D. Goenka Public School' and had never used 'Goenka' in itself/per se. Therefore, we have no reason to hold that adoption of 'Goenka' per se by the appellant in the year 2000 was in any manner mala fide."

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mark claims to be entitled to the exclusive use of any part thereof separately, he may apply to register the whole and the part as separate trade marks.

(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the incidents of, an independent trade mark.

17. Effect of Registration of Parts of a Mark.-(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in subEsection (1), when a trade markE (a) contains any partE (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a nonEdistinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered."

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case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales,

as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted." I &"&7 5 ."&; 57 "

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