Point of Law: Infringement of trade mark - Business in infringement of a registered design or a mark or is guilty of passing off, such a business cannot be said to be carried on in accordance with law and no right accrues

JUDGMENT :

1. In a suit for infringement of a registered design and passing off, the plaintiff has sought interim protection.

2. Upon the present application being moved, an ad interim Order dated January 4, 2021 had been passed granting orders in terms of prayers (a) and (c) of the petition. The petition has come up for final disposal after completion of affidavits.

3. Learned Senior Advocate appearing for the plaintiff has submitted that, the plaintiffs are manufacturers, merchants and exporters of various flour products. The predecessor-in-interest of the plaintiffs had started the business of manufacturing and marketing of flour under the name and style of Ganesh Flour Mills and sold products under the mark “Ganesh” since 1936. The plaintiff No. 2 had joined the business and carried on the same under the name and style of Ganesh Flour Mills. According to him, the plaintiffs have built a strong presence in West Bengal and Eastern India in terms of market share, brand recognition and distribution. He has submitted that, the plaintiffs are now having Pan India presence. He has contended that, the plaintiffs have adopted the trade mark “Ganesh” in the year 1936 in order to distinguish their products and also for trade identity. The plaintiffs had been in continuous and uninterrupted use of the trade mark “Ganesh”. He has referred to the trade mark registration of the word “Ganesh”. He has submitted that the same has been registered in Class 30.

4. Learned Senior Advocate appearing for the plaintiffs has submitted that, apart from the trade marks that have been registered in favour of the plaintiffs, the plaintiffs are entitled to protection on account of passing off. The plaintiffs have a turnover in excess of Rs. 500 crores per annum. The expenses on account of advertisement for the plaintiffs has been around Rs. 3 to 4 crores per annum. He has referred to the application for the trade mark made in 1956. He has also referred to the invoices for sales that the plaintiffs have made with regard to their products. He has drawn the attention of the Court to the letter issued by the Registrar of trade marks to the plaintiff on August 2, 1976.

5. Learned Senior Advocate appearing for the plaintiffs has submitted that, the plaintiffs became aware of the defendant using the word “Ganesh” to market the same products as that of the plaintiffs in 2015. He has drawn the attention of the Court to the fact that the defendant had applied six times for registration of the word “Ganesh”. The Registrar had disallowed three of such applications and the balance three had been rejected on the objections of the plaintiffs.

6. Learned Senior Advocate appearing for the plaintiffs has commented on the conduct of the defendant subsequent to the interim order dated January 4, 2021. He has submitted that, the defendant has adopted a dishonest approach. The defendant has sought to change the label although, in actual effect, the defendant is seeking to ride on the business goodwill of the plaintiffs despite the so called changes. According to him, the defendant is still using the word “Ganesh”. The user of the word “Ganesh” even on the new format is misleading and deceptively similar to that used by the plaintiffs. He has submitted that the defendant has not disclosed any document to show that the defendant was using the word “Ganesh” from the time it has claimed in the affidavit in opposition. The defendant has not disclosed any document to establish that, it has any registered mark in respect of any words used either in the old label or the new label. He has drawn the attention of the Court to the contents of the order dated January 4, 2021. He has submitted that, the defendant has not furnished details of the transactions as directed by the Court. He has submitted that, in the facts of the present case, the plaintiffs are entitled to orders in terms of prayer (a), (b) and (c) of the petition.

7. Learned Advocate appearing for the defendant has submitted that,