The main legal point established in the judgment is that the use of a deceptively similar trademark, which is likely to cause confusion, constitutes infringement of a registered trademark under the Trade Marks Act, 1999.

Manmohan Singh, J.

1. By this order, I propose to dispose of the pending application filed by the plaintiffs under Order XXXIX, Rules 1 & 2 CPC, being I.A. No.7955/2011 in the above-mentioned suit for permanent injunction restraining the infringement of trade mark, passing off, rendition of accounts of profits/damages, delivery up, acts of unfair competition etc.

2. The case of the plaintiffs is that plaintiff No.1 earlier known as LT Overseas Limited, was incorporated in the year 1990. The plaintiff No.1 is in the business, inter-alia of processing, marketing and exporting rice. It is a Rupees 700 crore company and is one of the leaders in the food products business. The plaintiff and its group companies own 5 state of art ultra modern rice plants. The plaintiff No.1 is ranked among the top 10 food processing companies in Northern India, and among the top 50 companies by Dun and Bradstreet 8th Edition of India’s Top 500 Companies, 2007.

3. It is submitted that the plaintiff No.1 has also made inroads into 43 countries across the globe including markets, like USA, Canada, UK and EU. In order to strengthen its presence in the global market, the plaintiff No.1 acquired Kusha Inc in 2007; Kusha Inc has a 42% share in the US market, giving plaintiff No.1 a combined share of 52% of the US rice market. This was also the first by an Indian Rice Company.

4. It is further submitted that out of the various well-known trademarks adopted by the plaintiff, one trademark is “SONA” which was adopted by plaintiff No.1’s predecessor, namely, M/s Lal Chand Tirath Ram Mills since the year 1987. The said trademark SONA was duly registered under No.497518 as on 08.09.1988 in class 30 in respect of rice. The said firm was continuously using this trade mark SONA till 1999 and on 26th March, 1999 the plaintiff No.1 took over M/s Lal Chand Tirath Ram Mills as a going concern along with all its trademarks including the trademark SONA. Pursuant to the execution of the said agreement, with effect from 1st April, 1999, the entire business of M/s Lal Chand Tirath Ram Mills stood transferred in the name of the plaintiff No.1 along with all the trademarks including the trademark SONA. Thereafter, a separate Deed of Assignment dated 25.07.2003 was executed for the affirmation of transferring of all the trademarks of the said predecessor of plaintiff No.1 including the trademark SONA. The request on Form TRADE MARK-24 dated 07.06.2004 for recording the name of plaintiff No.1 as the subsequent proprietor of the aforesaid trademark SONA has already been filed with the office of the Trade Marks Registry and the same is pending disposal.

5. It is also submitted that plaintiff No.1 also sold rice under the trademark SONA processed by M/s Lal Chand Tirath Ram Mills before the execution of the aforementioned agreement dated 26.03.1999. Since the year 1999, the goods under the trademark SONA are being sold by the plaintiffs’ sole selling distributor M/s Raghunath Agro Industries, Amritsar, plaintiff No.2 under the Trade Mark License Agreement dated 16.10.2007 which recorded the mutual understanding reached in the year 1999.

6. The plaintiffs have given the statement of annual sales, domestic as well as international market, in respect of rice under the trademark SONA in para-11 of the plaint from the year 1986-87 onward up to 2010-11. Similarly, in para-12 of the plaint, the plaintiffs have given the statement of advertisement and promotional expenses of plaintiff No.1 from the year 1994-95 till 2010-11. It appears from the said statement of sale figures as well as that of advertisement and promotional expenses that the plaintiffs have been carrying on business under the said trademark for hundreds of crores of rupees till date.

7. The allegations against the defendant are that the defendant was engaged in the business of marketing rice under the trade mark GANGA and suddenly, it adopted the trademark SONA which is identical to the plaintiff No.1’s registered trad