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High Court Of Delhi
ROSHAN LAL OIL MILLS LIMITED - Appellant
Versus
SHAKTI INDUSTRIES AMEDGARH (PUNJAB) - Respondent
Interim Application 5377 of 1993
Decided On : 05/01/1995
TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF MARKS - DECEPTIVE SIMILARITY - PRIOR USER - ACQUIESCENCE - INJUNCTION - BALANCE OF CONVENIENCE - IRREPARABLE INJURY.
Fact of the Case:
Plaintiff, the proprietor of the registered trademark "TAJ MAHAL" for edible oils, filed a suit against the defendant for infringement of trademark and passing off. The defendant claimed prior user of the mark "TAJ MAHAL KHAL" for oil cakes, alleging that it was assigned to them by M/s. Shree Mahavir Oil and General Mills, the original user of the mark. The plaintiff denied the assignment and claimed prior user of the mark "TAJ MAHAL" for edible oils.
Finding of the Court:
The court found that the plaintiff was the prior user of the mark "TAJ MAHAL" for edible oils and that the defendant's mark "TAJ MAHAL KHAL" was deceptively similar to the plaintiff's mark. The court also found that the defendant's use of the mark was not bona fide and that it was likely to cause deception or confusion in the minds of unwary customers. The court further found that the plaintiff had not acquiesced in the defendant's use of the mark and that the balance of convenience and irreparable injury favored the grant of an injunction.
Issues: 1. Whether the defendant was the prior user of the mark "TAJ MAHAL KHAL" for oil cakes. 2. Whether the defendant's mark was deceptively similar to the plaintiff's mark. 3. Whether the defendant's use of the mark was bona fide. 4. Whether the plaintiff had acquiesced in the defendant's use of the mark. 5. Whether the balance of convenience and irreparable injury favored the grant of an injunction.
Ratio Decidendi: 1. The court held that the plaintiff was the prior user of the mark "TAJ MAHAL" for edible oils based on the evidence of sales invoices showing use of the mark since May 1982. 2. The court held that the defendant's mark "TAJ MAHAL KHAL" was deceptively similar to the plaintiff's mark because both marks contained the words "TAJ MAHAL" and a picture of the Taj Mahal, and were likely to cause confusion in the minds of unwary customers. 3. The court held that the defendant's use of the mark was not bona fide because the defendant had not obtained an assignment of the mark from M/s. Shree Mahavir Oil and General Mills and because the defendant's use of the mark was likely to deceive or confuse customers. 4. The court held that the plaintiff had not acquiesced in the defendant's use of the mark because there was no evidence that the plaintiff was aware of the defendant's use of the mark or that the plaintiff had encouraged the defendant to use the mark. 5. The court held that the balance of convenience and irreparable injury favored the grant of an injunction because the plaintiff had established a prima facie case of infringement and passing off, and because the defendant's continued use of the mark would cause irreparable harm to the plaintiff's business.
Final Decision: The court granted an injunction restraining the defendant from using the mark "TAJ MAHAL KHAL" or any other mark deceptively similar to the plaintiff's mark "TAJ MAHAL" for oil cakes or any other allied or cognate goods.
( 1 ) IN this suit the plaintiff is seeking to restrain the defendant from manufacturing, selling, offering for sale, advertising or displaying directly or indirectly dealing in edible oils including Mustard oil, oil cakes and other allied and cognate goods under the trade mark taj MAHAL label , or any other trade mark identical with or deceptively similar to the plaintiff trade mark TAJ MAHAL label pending the hearing and disposal of the suit.
( 2 ) THE case set out is that the plaintiff, is the proprietor from 17. 1. 1983 of the registered trade mark taj MAHAL lable in respect of edible oils and oils. Mustard oil in class 29 for sale in the States of Punjab, Jammu and Kashmir, Himachal Pradesh, Bihar, Orissa and West Bengal. That the defendant is engaged in the business of manufacturing oil cakes and is selling the same under the trade mark taj MAHAL label and that the defendant is not the proprietor of the said trade mark yet is selling the goods in Delhi and other parts of the country and creating confusion in the markets and is passing off his goods as that of the plaintiff; that the defendant trade mark is identical with and deceptively similar to the plaintiffs trade mark; that the unwary purchasers are bound to be deceived in purchasing the defendants goods under the impression that it is emanating from the plaintiff s source. As against this, the defence is that the trade mark taj MAHAL which is subject matter of the dispute actually belongs to M/s. Shree Mahavir Oil and General Mills, Ahmedgarh, which is sister concern of the defendant, which is using it extensively and continuously since the year 1970 as the trade mark taj MAHAL was conceived and adopted by M/s. Shree Mahavir Oil and General Mills for mustard oil cakes much prior to the alleged adoption by the plaintiff and thus the said trade mark does not belong to the plaintiff; that the plaintiff is estopped from restraining the defendant from using the trade mark TAJ MAHAL for its product i. e. oil cake in as much as it is within the knowledge of the plaintiff that the defendant has been using the trade mark taj Mahal Khal in respect of oil cakes for the last 13 years i. e. from 1. 1. 1980 through main sales depots/agency M/s. Madan Gopal and Sons at Bhatinda; that the defendant s trade mark taj Mahal Khal , used for oil cakes has acquired tremendous reputation by virtue of its quality, publicity through various media and enormous net work of sale through out Punjab and Haryana; that the plaintiff s acquiescence and waiver are established beyond the shadow of any doubt; that the plaintiff s product i. e. edible oil falls in class 29 whereas defendant s product i. e. oil cakes falls within Class 31 of the Fourth Schedule of Trade and Merchandise Marks Act. That there is no passing off by the defendant; that the edible oil is meant for human consumption while oil cakes are meant for cattles, thus oil cakes cannot be passed off for the edible oil as the class of customers is altogether different. It is denied that the plaintiff is the prior user of the trade mark TAJ MAHAL; that the defendant has been permitted to use and adopt the said trade mark by Shree Mahavir Oil and General Mills for its product oil cakes. In substance, the defendant denied the averments in the plaint and prays for the vacation of the ex parte ad-interim injunction and the consequent disposal of the injunction application.
( 3 ) AS seen above, the plaintiff has been alleging the prior user of the trade mark TAJ MAHAL i. e. since 1977 for its product of edible oil whereas according to the defendant the trade mark TAJ MAHAL was conceived by M/s. Shree Mahavir Oil and General Mills which is sister concern of the defendant since 1970 who have allowed the defendant to use the said trade mark and the defendant has adopted and has been using the trade mark taj Mahal Khal for its product oil cakes for the last 13 years.
( 4 ) THERE is no dispute that both the plaintiff a
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