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2024 Supreme(Kar) 180
IN THE HIGH COURT OF KARNATAKA AT BENGALURU
ANANT RAMANATH HEGDE, J.
S.V.T Products – Appellant
Versus
S.S Pandian And Sons – Respondent
MFA No.2680 of 2023 (IPR)
Decided on : 05-04-2024
Advocate Appeared:
For the Appellant :SRI JAYAKUMAR S PATIL, SENIOR COUNSEL A/W SMT PRIYA, ADVOCATE)
For the Respondent: SRI SIVARAMAN VAIDYANATHAN, ADV.
IMPORTANT POINT
The main legal point established in the judgment is the importance of establishing prior use of a trademark, the significance of distinctiveness in trademark registration, and the scope of interference in discretionary orders under the Code of Civil Procedure.
Headnote:
Asafoetida - Trademark Infringement - Trade Marks Act, 1999 - Section 17, 30(2), 34 - The court considered the plaintiff's claim of trademark infringement and passing off by the defendant using a deceptively similar trademark 'SVT HOTEL SPECIAL' for selling asafoetida. The court analyzed the defendant's defense based on prior use, non-distinctiveness, and intended purpose of the trademark. The court also discussed the legal provisions under the Trade Marks Act, 1999, including Sections 17, 30(2), and 34, and their interpretations in the context of the case.
Fact of the Case:
The plaintiff claimed trademark infringement and passing off by the defendant using a deceptively similar trademark 'SVT HOTEL SPECIAL' for selling asafoetida. The defendant challenged the interim restraint order under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure.
Finding of the Court:
The court found that the defendant failed to establish prior use of the trademark and did not provide sufficient evidence to dislodge the prima facie validity of the plaintiff's trademark. The court upheld the impugned orders granting a temporary injunction in favor of the plaintiff and against the defendant.
Issues: The issues included whether the defendant was a prior user of the trademark, whether the trademark had a distinctive character, and whether the defendant's use of the trademark was protected under Section 30(2) of the Trade Marks Act, 1999.
Ratio Decidendi: The court held that the burden of proving prior use of the trademark was on the defendant, and the defendant failed to establish prior use. The court also emphasized the importance of distinctiveness in trademark registration and the protection provided under the Act. Additionally, the court considered the scope of interference in the discretionary order under Order XLIII Rule 1 of the Code of Civil Procedure.
Final Decision: The appeal was dismissed, and the impugned orders granting a temporary injunction in favor of the plaintiff were confirmed. The court clarified that the observations made in the order were only confined to the consideration of the interim application and shall not be construed as a finding on the merits of the main matter.
Asafoetida, (Hing) though bitter in taste is a food additive. The plaintiff claims that ‘asafoetida’ sold by him, under the registered trade mark “HOTEL SPECIAL” in addition to adding to the taste and the flavor of the food, has also enhanced the goodwill and the reputation of his business. However, the asafoetida, sold by the defendant under the trade mark “SVT HOTEL SPECIAL”, which according to the plaintiff deceptively similar to his registered trade mark, is making his business experience bitter.
2. The appellant/defendant is challenging the interim restraint order under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure. In short, the defendant is restrained by temporary injunction from infringing and passing off the plaintiff's registered trade mark ’’HOTEL SPECIAL” by using an identical and deceptively similar trade mark "SVT HOTEL SPECIAL" or any other identical, deceptively/ confusingly similar trade mark in relation to asafoetida.
3. For the sake of convenience, the parties to the present appeal are referred to as in the suit.
4. The plaintiff’s claim in a nutshell.
-The plaintiff is the proprietor of the registered trade mark "HOTEL SPECIAL" registered under the Trade Marks Act, 1999 (for short "Act of 1999"). The plaintiff has been marketing asafoetida since 1957. The trade mark "HOTEL SPECIAL" is used to sell a variety of asafoetida since 1993. The said trade mark is exclusively associated and identified with asafoetida sold by the plaintiff. The trade mark has earned goodwill and reputation and is registered on 08.01.2002 and valid till 08.01.2032. The label is registered on 14.08.2006 and is valid till 14.08.2026.
5. The plaintiff alleged infringement and passing off of his trade mark by the defendant by using a deceptively similar trade mark "SVT HOTEL SPECIAL" for selling asafoetida.
6. The defence in a nutshell.
-The disputed trade mark could not have been registered. The defendant has applied for revocation of the trade mark. The defendant is the prior user of trade mark "SVT HOTEL SPECIAL" for Asafoetida since 1990. The disputed trade mark contains generic words and the trade mark in dispute is not distinctive. The expression “HOTEL SPECIAL” speaks about the intended purpose.
7. The Trial Court has held that the plaintiff is entitled to a temporary injunction.
8. Sri Jayakumar S Patil, the learned Senior counsel appearing for the defendant/appellant would contend that the expression "SVT HOTEL SPECIAL" is a generic expression and it cannot be claimed as a trade mark by anyone, and use of such trade mark is permissible under Section 17 of the Act of 1999. Even otherwise the defendant/appellant is the prior user of the mark "SVT HOTEL SPECIAL" and the use of such mark or letters or expression by the defendant is protected under Section 34 of the Act of 1999. The contention in the written statement that the defendant has been using the expression "SVT HOTEL SPECIAL" before the plaintiff's registration is wrongly construed by the Trial Court, to hold that such a defence amounts to an admission that the trade mark "HOTEL SPECIAL" is not generic but is distinctive. The Trial Court failed to consider the prima facie aspects of the documents produced by the defendant.
9. Referring to the additional documents produced by the appellant before this Court, it is urged that the distributor agreement between the defendant and the distributor entered on a stamp paper in 1992 prima facie demonstrates the use of the expression "SVT HOTEL SPECIAL" by the defendant since 1992.
10. Section 30(2) of the Act of 1999 also gives protection against any action of alleged infringement, in case the expressions are used to show the “intended purpose”. The expression “HOTEL SPECIAL” is used to indicate quantity and the intended purpose i.e., the product is sold indicating that it is meant for bulk use in hotels as such, registration of trade mark is invalid.
11. The impugned order does not give any valid reason for the order on application t
