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2010 Supreme(Bom) 1772
HIGH COURT OF JUDICATURE AT BOMBAY
Anoop V. Mohta, J.
Rajesh Chheda, Prop. of Shubham Plywood – Appellant
Versus
Shubham Plywood Park Through Its Proprietor, P.K. Loohda – Respondent
Notice Of Motion No. 3963 Of 2009 In Suit No. 2861 Of 2009
Decided On : 23-02-2010
The use of a common word, such as 'SHUBHAM', without distinctive elements and in combination with other generic words, does not warrant protection as a trademark.
Headnote:
TRADEMARK - INFRINGEMENT OF TRADEMARK 'SHUBHAM' - The court dismissed the motion for interim relief, stating that the use of the word 'SHUBHAM' by the defendants, without the swastik symbol and in combination with other generic words, did not warrant protection as a trademark.
Fact of the Case:
The plaintiff filed a suit to prevent the infringement of the trademark 'SHUBHAM' and passing off against the defendants, who were allegedly using the words 'SHUBHAM PLYWOOD' and 'SHUBHAM PLYWOOD PARK'. The plaintiff's registered mark was 'SHUBHAM' in Class 35, used for sale and purchase of plywood, veneers, block board, flush doors, etc.
Finding of the Court:
The court found that the defendants' use of the word 'SHUBHAM' without the swastik symbol and in combination with other generic words did not constitute infringement of the plaintiff's trademark. The court dismissed the motion for interim relief, stating that the plaintiff failed to show that the defendants were using the trademark 'SHUBHAM' with the swastik symbol as that of the plaintiff.
Issues: The issues revolved around the alleged infringement of the plaintiff's trademark 'SHUBHAM' by the defendants' use of the words 'SHUBHAM PLYWOOD' and 'SHUBHAM PLYWOOD PARK'. The plaintiff sought interim relief to prevent the defendants from using the name in the specific area where the plaintiff was doing business.
Ratio Decidendi: The court's decision was influenced by the fact that the defendants' use of the word 'SHUBHAM' was not accompanied by the swastik symbol and was combined with other generic words, making it insufficient to warrant protection as a trademark. The court also cited previous judgments emphasizing that descriptive, laudatory, and common usage words cannot be registered as trademarks.
Final Decision: The court dismissed the Notice of Motion, denying the plaintiff's request for interim relief and awarded no costs.
ORDER
Anoop V. Mohta, J:
1. The plaintiffs Suit is for preventing the infringement of trademark "SHUBHAM" and passing off against the defendants, who alleged to have been using the word "SHUBHAM PLYWOOD" AND "SHUBHAM PLYWOOD PARK". Admittedly, the registered mark is "SHUBHAM" in Class 35 in the name of M/s. Shubham Plywood, Service Providers and Merchants of the Plaintiffs, who is dealing with sale and purchase of plywood, veneers, block board, flush doors, etc. The word "SHUBHAM" is in use since 1998 and accordingly placed on record the sales figures.
2. It is clear that the plaintiffs registered trademark/word "SHUBHAM" is registered along with the symbol of swastik at the right side. The word "plywood" is not there. The averment that registered trademark is "SHUBJAM PLYWOOD" is not correct. The plaintiffs unable to place material on record to substantiate the case except photographs of the shop name "SHUBHAM PLYWOOD" and one visiting card. There are innumerable shops selling the plywood under the name of "SHUBHAM PLYWOOD" in different parts of Mumbai. No such case is made out for appropriate reliefs against all those persons. The contention is that in the area where the plaintiffs are doing business, the defendants are also doing business by putting the name as "SHUBHAM PLYWOOD PARK" and, therefore, this Suit and Motion for interim relief, restricted to the area only.
3. The defendants in reply resisted the same on various grounds and also averred that since 2001-2002 as they were doing the business under the name and style of "SHUBHAM SANITARY & HARDWARE". They have adopted this name and containing the business also of plywood by adopting the name "SHUBHAM PLYWOOD PARK". There was no intention to use or mis-use the name of plaintiffs alleged name "SHUBHAM". Even otherwise, "SHUBHAM" is common word. The defendants are not using the logo "SHUBHAM" with swastik mark and neither selling plywood by using the trademark of the plaintiff on the plywood. He is selling and doing the business of plywood of different variety and names like "Valley", "Harsh Gold". It is also stated that he is the stockist of "Choice Ply".
4. The defendants have duly replied and resisted even the notice sent by the plaintiffs in this regard. The defendants have place on record various documents, invoices to show that they are doing business of "SHUBHAM PLYWOOD PAQRK" in the shop since 2000.
5. The Suit is filed in September, 2009. Even otherwise, the word "SHUBHAM" is very common and household word and as adopted for particular shop. In this the background, I see no case is made out for adinterim relief at this stage. No such proceedings have been taken out by the plaintiffs against all the persons who are using the word "SHUBHAM PLYWOOD" in various parts of Maharashtra and specially in Mumbai. Merely because the defendants shop is in the Malad area, therefore, this Suit is only against the defendants.
6. To adopt the name of the shop "SHUBHAM" by putting the word "SHUBHAM", that itself in my view, is not sufficient to grant interim relief as prayed by the plaintiffs in the present case as there is no averment to show that they are selling the product/plywood titling the name or using the trademark "SHUBHAM" with the symbol of swastik as that of the plaintiff. They are selling or doing similar business of selling plywood of other brand. There cannot be restraintment order preventing the defendants from dealing with the plywood of other brands.
7. In view of the above facts and circumstances, the judgment so cited and relied upon by the plaintiffs in support of the submission which are distinct on fact and circumstances are also of no assistance.
8. I have already observed in following words, referring to the effect of descriptive, generic and general household words in Plus Inc. vs. Consim Info Private Limited and Network Solution Inc, 2010 Vol. 112(1) Bom.L.R. 89:
"11 The domain name of the Plaintiff comprising two generic and descriptive words "India" and "Prop
