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2006 Supreme(Cal) 266
High Court Of Calcutta
PINAKI CHANDRA GHOSH, TAPAN KUMAR DUTT
MODERN FOOD INDUSTRIES (I) LIMITED - Appellant
Versus
MODERN BAKERY - Respondent
A. P. O. T 39 Of 2006
Decided On : 05/03/2006
A prior user of a trademark can defeat the rights of a registered user if the prior user can show that it had acquired goodwill and reputation in the mark before the registered user's first use of the mark.
Headnote:
MODERN FOOD INDUSTRIES (I) LTD. V. MODERN BAKERY - TRADEMARK - COPYRIGHT - PASSING OFF - INFRINGEMENT - PRIOR USER - SECTION 29, 34 OF THE TRADE MARKS ACT, 1999 - SECTION 48 OF THE COPYRIGHT ACT, 1957 - HONEST CONCURRENT USER - DISTINGUISHED.
Fact of the Case:
Modern Food Industries (I) Ltd. (the company) sued Modern Bakery and its partners (the firm) for trademark infringement, copyright infringement, and passing off. The company claimed to be the registered proprietor of the trademark "modern" in respect of bread and had a copyright in the artistic work of the packaging. The firm claimed to be the prior user of the mark "modern" and had been using it since 1949.
Finding of the Court:
The court held that the firm had been able to establish that it was the prior user of the mark "modern" and had acquired goodwill and reputation in the market in relation to the mark. The court also found that the company had due knowledge of the firm's business for a long time but did not take any steps until the suit was filed.
Issues: 1. Whether the firm was the prior user of the mark "modern". 2. Whether the company had acquired goodwill and reputation in the mark "modern". 3. Whether the firm was guilty of passing off.
Ratio Decidendi: 1. The court held that the firm had been able to establish that it was the prior user of the mark "modern" on the basis of the documents disclosed before it. The court noted that the firm had been using the mark since 1955, while the company had only started using the mark in 1968. 2. The court held that the company had acquired goodwill and reputation in the mark "modern" by virtue of its registration of the mark and its extensive advertising and publicity of its products under the mark. 3. The court held that the firm was not guilty of passing off as there was no likelihood of confusion between the products of the company and the firm.
Final Decision: The court set aside the order of the trial court and allowed the firm to continue using its wrappers and labels, except for those that were identical to the company's registered copyright.
( 1 ) THE appeal being A. P. 0. T. No. 32 of 2006 was filed by the appellant/petitioner Modern Food Industries (I) Limited (hereinafter referred to as the said company) from an order dated 14th november, 2005 passed by the Hon'ble First Court. Similarly, the appeal being A. P. O. T. No. 39 of 2006 was filed by M/s. Modern Bakery and Others (hereinafter referred to as the said firm and its partners ). Both the appeals were directed against an order dated 14th November, 2005 passed by the hon'ble First Court.
( 2 ) WE have heard the learned senior Advocates for the parties.
( 3 ) FACTS of the case briefly are as follows: the said company is a public sector undertaking under the administrative control of the Ministry of Agriculture/ministry of Food Processing Industries under the Government of India. The said company was incorporated in the year 1965. The production had commenced in the year 1968.
( 4 ) THE case of the said company that the bread produced by the said company has been sold since its inception under the trademark "modern". The said company is the registered proprietor of the said trademark "modern" in respect of "all types of bread" under the Registration No. 444239b in Class 30 w. e. f. 11th October, 1999. The said registration was duly renewed from time to time and is still subsisting. The said company also designed an attractive packaging get up, lay out and colour scheme for "modern" bread which was registered as a copyright in favour of the company being No. A-9291/73 under the provisions of the Copyright Act, 1957.
( 5 ) THE said company expanded its activities over time from one production unit in 1956 to 14 bakery units by 1994. On 31" January, 2000 Government of India disinvested 74% of its shareholding in the said company in favour of hindustan Lever Limited (hereinafter referred to as H. L. L.) and it ceased to be a Government company w. e. f. 1st February, 2000 and became a joint venture company of the Government of India and H. L. L.
( 6 ) ON 29th November, 2002 Government of India disinvested its balance stake in the said company in favour of H. L. L. by a Government Notification dated 6th January, 2003. The said company spent huge amounts by way of advertisement and publicity of its products under the trademark "modern" and the same have acquired enormous goodwill and reputation and has become a distinctive entity in respect of the product of the said company.
( 7 ) THE said company also started selling as has been stated since long another range of breads under the trademark "modern" in conjunction with "kissan", which is a trademark of H. L. L. used by the said company under a licence. The packaging of the said product comprise of the following salient features: (a) A golden yellow background with a healthy crop of wheat in shades of brown in the forefront; (b) The device of a large slice of bread with the words "farm FRESH atta BREAD" depicted in bold lettering the trademark "modern" on a dark background in an oval device. The aforesaid packaging was designed for and on behalf of the said company by its advertising agency for valuable, consideration and is an original artistic work within the meaning of section2 (c) of the Copyright Act, 1957 of which copyright vests exclusively with the said company. '
( 8 ) THE said company pleaded in the petition that recently they came to learn that the said firm and its partners are selling bread in plastic packets having dimensions which are deceptively similar with the company and the distinctive package design of the said company in respect of bread and in colourable imitation thereof. It is further stated that the product of the said firm under the said mark is identical and/or deceptively similar to the said company's said trademark and is packaged in packets which resemble the said company's product. The said firm and its partners have chosen the said trademark, including the colour scheme, get up and design and with the
