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IN THE HIGH COURT AT CALCUTTA
KRISHNA RAO, J.
Girnar Food and Beverages Pvt. Ltd. – Appellant
Versus
The Registrar of Trade Marks and Another – Respondents
IPDTMA No. 80 of 2023
Decided On : 18-06-2024
Trademark - Trade Marks Act, 1999 - Sections 91(1), 17 - The court analyzed the provisions regarding trademark registration, focusing on the exclusivity of marks and the likelihood of consumer confusion, ultimately ruling in favor of the appellant due to prior use and established goodwill.
Fact of the Case:
The appellant opposed the registration of the respondent's mark 'HAATHI', claiming it was deceptively similar to their registered mark 'JUMBO', which they had used since 1985. The Registrar rejected the opposition, leading to the appeal.
Finding of the Court:
The court found that the Registrar failed to appreciate the prior use and goodwill of the appellant's mark, and that the respondent did not provide sufficient evidence to support their claim of prior use.
Issues: Whether the respondent's mark 'HAATHI' is deceptively similar to the appellant's registered mark 'JUMBO', and whether the Registrar erred in allowing the registration.
Ratio Decidendi: The court held that the prominent features of a trademark must be considered in determining deceptiveness, and that prior use and established goodwill are critical in trademark disputes.
Result: The court set aside the Registrar's order and quashed the registration of the respondent's mark.
JUDGMENT :
KRISHNA RAO, J.
1. The appellant has filed the present appeal under Section 91(1) of the Trade Marks Act, 1999, against the order passed by the Registrar Trade Marks dated 22nd July, 2023, wherein the opposition filed by the appellant being no. 718498 against the application No. 1411841 in Class 30 of the respondent, was rejected and permitted the application filed by the respondent to proceed for registration.
2. On 8th February, 1989, registration of “JUMBO” mark was granted to the appellant with respect to Tea and Spice (Foods). On 11th September, 2006 further two marks have been registered.
3. It appears from the records that the appellant had notified the respondents regarding the application and its proceeding filed before this Court, but even after being notified about the same, none appears on behalf of the respondents. Thus, this Court had heard the matter ex-parte.
4. The appellant is an old and reputed company carrying on business of manufacturing, selling, and exporting tea including black tea, green tea, flavoured tea, fruit tea/infusions, herbal infusions and premixed tea, iced tea and coffee. The appellant has various offices, factories and warehouses in Ahmedabad, Coimbatore, Coonoor, Guwahati, Kochi, Kolkata, Mumbai, Pune, Siliguri, Umbergaon and Colombo, Sri Lanka. The appellant also has alliances and partnerships in various cities across the world like Dubai (UAE), Warsaw (Poland), St. Petersburg (Russia), Jeddah (Saudi Arabia), Sydney (Australia), New York (USA), Muscat (Oman), Mombasa (Kenya) and Conakry (Guinea).
5. The appellant also exports bulk/loose and packaged tea to various countries including the ones indicated above. The appellant has more than 50 retail outlets in western and southern India. The appellant further has a virtual/online shop offering a vast, unique and exquisite range and quality of teas and other beverages.
6. The appellant is using its mark, being a device of an Elephant consisting of the word “JUMBO” and “FIVE JUMBO” in India since the year 1985 and is also the registered proprietor thereof. The mark of the appellant is:
7. Registration for the mark “JUMBO” bearing No. 505034 in respect of “Tea and Spices (Foods).” The trade mark “JUMBO” is dated as of 8th February, 1989 and is advertised in the Trade Marks Journal No. 891 dated 16th December, 1994.
8. The marks have been used by the appellant continuously and uninterruptedly and the products of the appellant always bear the said marks and such products have been sold in India extensively and also exported to other countries.
9. The striking features of the marks are the picture of the five elephants along with the word “JUMBO”, over which the appellant has proprietary rights and it also indicates the source of the products of the appellant.
10. The public at large associates such features of a mark with the appellant and the appellant alone, the picture of elephants along with the word “JUMBO” have grasped the consumer consciousness as such any other mark consisting of the device of an elephant with any word meaning elephant in Hindi, English or any other Indian language, would inevitably amount to deception in the minds of the public, along with infringement of the registered trademark of the appellant.
11. The appellant came to learn that an application, numbered as 1411841 for registration of a mark in Class 30, being a device of an elephant consisting of the word “HAATHI” has been filed by the respondent no. 2 on 6th January, 2006, claiming use since the year 1970.
12. It is the submissions of the appellant that the adoption of the device of an elephant along with the word “HAATHI” was completely mala fide and was in any event deceptively similar to the JUMBO marks of the appellant. Every prominent feature of the appellant’s marks was lifted and used by the respondent no. 2 for obtaining registration over the said impugned mark.
13. Immediately after knowing about the same, the appellant filed its opposition to such applicatio
The decision emphasizes the importance of prior use and consumer confusion in trademark disputes, reinforcing the need for evidence in claims of trademark registration.
A prior user of a trade mark has superior rights in passing off actions, preventing unauthorized use by subsequent users, especially when marks are likely to confuse consumers.
The court held that registration of trademarks does not grant exclusive rights over a common or partially generic term, emphasizing the need for distinctiveness to prevent confusion.
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
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