IMPORTANT POINT
The prior user of a trademark has superior rights in passing off actions, regardless of subsequent registration by another party.

JUDGMENT :

HARISH TANDON, J.

1. The plaintiff is the appellant in the instant case assailing the order no. 44 dated 05.08.23 passed by the learned Additional Session Judge, Barasat, 7th Court in Title Suit no. 3 of 2016 by which the order of temporary injunction was restricted to the edible vegetable oil till the disposal of the suit. The appeal is taken out at the behest of the appellant on the score that the Court should not restrict the temporary injunction in respect of edible vegetable oil only despite being the prior user of the trademark.

2. On the other hand, the defendant/respondent has filed the cross-objection assailing the order of the temporary injunction on the premise that even the order of temporary injunction restricted to edible vegetable oil could not be passed as the trademark “Rishta” is used by it since 1995. Both the appeals and the cross-objections are taken up together having aimed against the common order.

3. It is a specific case of the plaintiff/appellant that being a leading manufacturer of various kinds of food products like atta, maida, suji, besan, edible oils etc, such products were manufactured and sold throughout the country under the brand name “Rishta” which has acquired reputation and goodwill in the market being associated with the superior quality of products and thus became a distinctive mark in the market. The appellant claimed to have manufactured and adopted the said mark “Rishta” since 2000 and is using the said mark continuously, uninterruptedly and extensively and has become a well known product in such name in the household. It is averred that upon acquiring the reputation, goodwill and distinctiveness in the said trade name or market expenditures were made for promoting the said product in the said mark which gives impetus in the sales which would be evident from the turnover during the relevant assessment years.

4. Subsequently, the application was made by the appellant for registration of the mark “Rishta” in Class 29 and 30 which was eventually granted. However, due to inadvertence and the negligence committed by the trademark attorney, the period of the registration under Class 30 expired/lapsed and a fresh application for registration has been duly applied. However, it is further contended that despite the expiration or lapse of the registration period, the plaintiffs continued with the business activities of manufacturing and selling the edible oil and the other food items by exclusively using the word “Rishta” and also in conjunction with the said word upon adopting a unique packaging of the products. It is asserted that the volume of the turnover and the expenses incurred for promotion of the trademark “Rishta” acquired a distinctive brand name associated with the appellant. It is alleged in the plaint that in the month of May, June 2016, it was noticed by the appellant that sale in the North India decreased considerably and on an enquiry it was revealed that the sale of the product with the trade name “Rishta” by the defendant/respondent was responsible therefor. It is further alleged that the respondent is selling the inferior quality products with the trademark “Rishta” with an object to deceive the public and the members of the trade with an intent to create a perception of nexus with the appellant.

5. On the conspectus of the aforesaid allegations, the appellant filed Title Suit no. 3 of 2016 before the District Judge, Barasat claiming a relief in the form of decree of permanent injunction against the respondents from infringing the registered trademark of the appellant by use of the mark “Rishta” or by use of any other marks identical or deceptively similar thereto and also from passing off or to pass off its product by using mark “Rishta” or any other mark deceptively similar thereto.

6. The respondent contested the said application for injunction after the service of notice and took a stand that it obtained the registration on 29th March, 2001 of a mark “Rishta” for the