Parle Products Private Limited vs Parle Agro Private Limited

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2008 Supreme(Bom) 1774

2009 (1) ALL.M.R. 859
High Court of Judicature at Bombay
THE HONOURABLE MRS. JUSTICE ROSHAN DALVI
Parle Products Private Limited – Appellant
Versus
Parle Agro Private Limited – Respondent

Notice of Motion No.4431 of 2007 In Suit No.3203 of 2007
Date of Judgment : 18-12-2008

Advocates Appeared:
For the Plaintiff :Veerendra V. Tulzapurkar , Sr. Advocate, Salil Shah, Ramesh
Gajaria, M.R. Nair, Deepa Hate and Chitra Parasnis i/by M/s.Gajria & Co., Advocates. For the Defendant:Janak Dwarkadas, Sr. Advocate, Navroz Seervai, Sr. Advocate, Rahul Chitnis, Nishad Nadkarni and Shailendra Bhandade i/by M/s.DSK Legal, Advocates.

Headnote:Trade and Merchandise Marks Act, 1958 - Section 29 - Infringement of trade mark - Family business in name of " Parle" - Bifurcated by brother - Plaintiff’s group marketed and sold their products under specific identification marks e.g. Monaco, Crakjack etc. - Defendant’s group under Fruti, Appy and Bailey - With word "Parle" as its prefix or suffix - Plaintiff’s products, Biscuits and confectioneries - Defendant’s products Bererages - Subsequently manufacturing ’Toffees’ - No agreement between parties restraining either of groups from carrying on business of other group for any period of time within any place - Defendant used words "Parle Confi" - Not visibly similar to trade mark of plaintiff - Plaintiff’s trade mark not prominently displayed by defendant - Defendants permitted to use words "Parle Confi" subject to conditions. - In this case, there is no restrictive MOU between the parties. The parties have merely "exited" from each others’ businesses by sale of their shares. The never ceased to be members of the house of Parles. There was no restriction upon the defendant to enter into confectionery business which was in fact specifically allowed under the object clause of its Memorandum of Association. The defendant has not used the entire of any of the plaintiff’s trade marks.
       In this case, neither is the plaintiff’s trade mark prominently displayed, nor is the word "Parle" as the prefix to the word "Confi" prominently displayed, nor is the defendant’s corporate name prominently displayed on the labels, Exhibited-D to the plaint. The use being only of the earlier used business name, which the defendant calls house name, is, therefore, not seen to be lacking in bona fides or honestly or adopted dishonestly "so as to cash in on the goodwill and reputation" attached to the trade-mark of the plaintiff as observed in paragraph 37 of the judgment in the case of Poddar Tyres Ltd., AIR 1993 Bom 237 (supra) upon the facts of that case specifically set out in paragraph 38 therein.
       It may be mentioned that the corporate name of the defendant would have been adopted upon following the procedure under Section 20 of the Companies Act, 1956. No exception taken by the plaintiff under Section 21 thereof at the time of registration of the name of the defendant is shown. The plaintiff can have no objection to the use of the corporate name per se by the defendant as the business of the defendant in the field confectioneries or biscuits is not challenged.
       It is urged on behalf of the defendant that in view of the housemark that the defendant is entitled to, it must be allowed to use the housemark "Parle" as a prefix to the word "Confi" on the labels of the defendant showing its corporate name. The use of the corporate name of the defendant and considering the judgment supra, the use of the words "Parle Confi" by the defendant may be permitted upon certain directions.
       Trade Marks Act, 1999 - Sections 2(1)(9) and 135 - Code of Civil Procedure, 1908, Order XXXIX, Rule 12 - Use of common trade mark - Parties belonged to same family - Plaintiff not registered the name "Parle Confi" - Claim as against infringement of trade mark - Held - Plaintiff had not registered their trade mark as "Parle Confi" therefore they cannot per se forbid defendants from its use - Misrepresentation would at best to extent that it is product of "Parle Group" and would not affect plaintiff’s sale under their mark - Defendants coming from same family - There is not overall similarity of words "Parle Confi" to plaintiff’s registered mark - Defendant cannot be restrained from using labels as in plaint.

Judgment :

1. Theparties to the Suit are Companies incorporated by two Groups of the family of one Mohanlal Dayal Chauhan who have been carrying on business in the name of “Parle” as a part of their corporate name in respect of products for which each has obtained registered trademarks, inter alia, for the word “Parle” singly or in conjunction with other words.Whereas the Plaintiff carries on business of biscuits and confectioneries in their corporate name, the other group of family of Mohanlal Dayal Chauhan carrying on business of beverages has diversified also into the business of confectioneries which are manufactured and marketed by the Defendant. It is the Plaintiff's case that the two groups of the family of Mohanlal Dayal Chauha n hailing from Vile Parle were to carry on distinct and separate fields of activities being biscuits and confectioneries on the one hand and beverages on the other and, therefore, neither can trample upon the field of business activity of another so as to use any trade name or market any product which would be similar to the registered trade marks of that other.

2. Several facts are admitted between the parties and require to be noted at the inception.

(a) The initial business was set up by Mohanlal Dayal Chauha n in 1929 in the name of Parle Products Manufacturing Company.

(b) This was a partner ship business of Mohanlal along with his 5 sons to carry on business of selling confectioneries.

(d) Thereafter the said Firm further expanded its line of business to beverages through another Partnership Firm, Parle Bottling Company. The 5 sons were the partners of that Firm.

(e) In 1950 the Plaintiff was incorporated. All the partner s were its first Directors.

(f) In 1952 Parle Bottling Company was converted into a Limited Company owned by all the

brothers.

(g) There was division of labour between the brothers:

Kantilal and Pitamber looked after the business of biscuits and confectioneries; Jayantilal looked after the business of beverages. Hence the Plaintiff was looked after essentially by 2 of the sons Kantilal and Pitamber and Parle Bottling Company Limited was looked after essentially by Jayantilal.

(h) Yet all of them earlier continued to hold shares in both the Companies. Subsequently Jayantilal and his family “exited” from the Plaintiff and Kantilal and Pitamber and their families “exited” from Parle Bottling Company Private Limited. (i)Both the Firms continued to use the word “Parle” as a part of their corporate name as well as a trade mark on the products manufactured, marketed and sold by them.

(j) Both the groups marketed and sold their respective products under specific product identification marks / b r a n d s e.g. Monaco, Crackjack, etc. by the Plaintiff's group and Fruiti, Appy and Bailley by the Defendant's group. This was with the word “Parle” as its prefix or suffix.

(k) The decendents of Jayantilal incorporated the Defendant - Company. The Defendant also has used the words “Parle Agro” in its corporate name. It is accepted by both that each of them can use the word “Parle” for the specific products which each group was initially manufacturing or looking after. Hence the Plaintiff has no quarrel with the use of the word “Parle” by the Defendant in respect of its beverage products. The Defendant has no quarrel with the use of the word “Parle” by the Plaintiff in respect of confectioneries and biscuits. Each has however been naturally using separate names /ma r ks / b r a n d s for each of their separate products as illustrated above.

3. It must be appreciated that the initial business was of a Partnership Firm. The business expanded and diversified. The partners formed a Limited Company. All the businesses were carried on by that Limited Company. That was the Plaintiff-Company. Thereafter they formed another Company. Thereafter the partners divided their management as aforesaid. Yet each of them

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2008 Supreme(Bom) 1774

2009 (1) ALL.M.R. 859High Court of Judicature at Bombay THE HONOURABLE MRS. JUSTICE ROSHAN DALVI Parle Products Private Limited – Appellant Versus Parle Agro Private Limited – Respondent Notice of Motion No.4431 of 2007 In Suit No.3203 of 2007Date of Judgment : 18-12-2008

2009 (1) ALL.M.R. 859
High Court of Judicature at Bombay
THE HONOURABLE MRS. JUSTICE ROSHAN DALVI
Parle Products Private Limited – Appellant
Versus
Parle Agro Private Limited – Respondent

Notice of Motion No.4431 of 2007 In Suit No.3203 of 2007
Date of Judgment : 18-12-2008