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2016 Supreme(Del) 1755
IN THE HIGH COURT OF DELHI AT NEW DELHI
MANMOHAN SINGH, J.
SAURABH AGROTECH PRIVATE LIMITED – Plaintiff
Versus
RADHEY SHYAM AGENCIES – Defendant
I.A. No. 23526 of 2015 & CS (OS) No. 3341 of 2015
Decided On : 22-04-2016
For the Plaintiff :Mr. Rajiv Nayar, Mr. Sandeep Sethi, Senior Advocates with Mr. Rajendra Bhansali, Mr. Harshit Tolia, Mr. Sitesh Singh and Mr. Umar Khan, Advocates.
For the Defendant :Dr. Abhishek Manu Singhvi, Senior Advocate with Mr. Narendra M. Sharma, Mr. Ankur Sood, Ms. Prachi Johri, Ms. Prachi Gupta, Mr. Shoumendu Mukherjee and Mr. Akshay Ringe, Advocates.
Headnote:
Trade Marks Act, 1999 - Section 31, 33, 142 - Civil Procedure Code, 1908 - Order 39 Rules 1, 2 - Subsequent proprietor - Infringement of mark - Infringement of copyright
- Passing off - Deception, test of confusion - Assignment - Plaintiff adopted and started using the trademark ASHOKA in relation to edible oil, oil cakes, vegetable ghee, and allied goods - Trademark ASHOKA got registered in 1979 - Plaintiff is the registered subsequent proprietor of the trademark ASHOKA - Benefit of user of 1975 by Rohtas Industries would come in favour of the plaintiff - Defendants No.2 & 3 are using the identical trademark in respect of the same goods and in the same area - Defendants have also infringed the copyright of the plaintiff in the label mark - There is no valid justification given by defendant No.3 to use the same mark after assignment - Silence of defendant No.2 - Mark was assigned the defendants No.2 & 3 have started using the mark ASHOKA very recently which is an afterthought - Defendants have not produced any detail of sales turn over or advertisement expenses of any of its products - Plaintiff has been able to make out a classic case of infringement - Both labels are similar and both are bought in the same market - Confusion and deception is bound to happen.
Trade Marks Act, 1999 - Section 31, 33, 142 - Infringement - Territorial jurisdiction - Scope of - Plaintiff has invoked the jurisdiction - Plaintiff has also filed invoice of sale of goods of defendant No.2 in Delhi - It was a case of quia timet action - Assignment deed is a valid document - No suit for infringement was ever filed or pending against the defendants - Defendants cannot take the advantage of earlier litigations by infringing the Trade Mark - There is no evidence to establish that after the assignment, the defendant No.3 has used the mark ASHOKA in public on commercial scale - Till the assignment is valid and subsisting on the Register of Trade Marks, the defendants are not entitled to infringe the mark ASHOKA - Plaintiff is the registered proprietor of the trademark ASHOKA - It has been used earlier than the defendants - Injunction granted - Application is disposed of.
MANMOHAN SINGH, J.
1. By way of this order, I propose to decide the pending application being I.A. No. 23526/2015 filed by the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 of CPC.
2. The plaintiff, M/s Saurabh Agrotech Private Limited has filed the suit for permanent injunction, infringement of the trademark, infringement of the copyright, passing off, damages, rendition of accounts and delivery up etc. against the three defendants namely, Radhey Shyam Agencies, Vijay Solvex Limited and M/s Raghuvar (India) Ltd.
3. Brief facts of the case as per the plaint are:-
(i) The plaintiff-Company came to be incorporated in August, 1994. It is engaged in the business of manufacturing, marketing and selling all kinds of edible oil, oil cakes, vegetable ghee and allied goods.
(ii) In the year 1975, one M/s Rohtash Industries Limited, Times House, 4th Floor, 7, Bahadurshah Zafar Marg, New Delhi-110002 adopted and started using the said trademark ASHOKA in relation to goods in question viz. edible oil, oil cakes, vegetable ghee, and allied goods and business of manufacturing and marketing edible oils and used the same continuously and in the course of trade. The said trademark ASHOKA got registered under registration No. 354173 as of 5th October, 1979 in Class 29.
(iii) The said referred Company sold its entire business of edible oil as a going concern including the trademark ASHOKA to defendant No. 3 by agreement dated 31st July, 1984. The application on Form TM-24 for change of entry was filed on 23rd March, 1988 in the Trade Mark Registry by the defendant No. 3 for entering themselves as assignee, the same was allowed on 5th May, 1988 in the name of defendant No. 3. Necessary entry was made in the register of trademarks.
(iv) Due to communication gap between earlier proprietor of the mark and their attorney, the above registration of the trademark vide No. 354173 in Class 29 was lapsed as renewal application was not filed in time in the Trademark Registry by its attorney. But the fact remains that the rights on trademark were assigned which fact is not disputed by the assignor or assignee.
(v) Subsequently, the plaintiff acquired the rights of proprietorship of the said trademark by way of Assignment dated 7th April, 2008 from M/s. Raghuvar (India) Ltd./defendant No. 3 herein. After having acquired rights, the plaintiff filed the application for the same mark ASHOKA for change of entry in its name on Form TM-16. The defendant No. 2 after about two years also filed the objection to the application for registering the assignment. But the plaintiff’s application was allowed. The mark was duly registered. After passing the order dated 13th May, 2010 by the Trade Marks Office in favour of the plaintiff, the plaintiff became proprietor of the trademark, which is the subject matter of the present suit, bearing No. 1324290 in Class-29 in respect of said goods applied for claiming use since the year 1975. The said application was originally filed by defendant No. 3 prior to the date of assignment.
(vi) As the plaintiff apprehended that the defendants are likely to start or has just started infringing the registered trademark ASHOKA of the plaintiff as well as by using the similar label along with the device of a lion and a wheel within the territorial jurisdiction of this Court, therefore the suit is filed.
(vii) It is alleged in the suit that defendant No. 2 is attempting to infringe the trademark of the plaintiff and to pass off their goods as of the plaintiff as it is claimed by the said defendant No. 2 in the market that they are the permitted user of defendant No. 3. Defendant No. 1 who is the agent of defendant No. 2 is selling products of defendant No. 2 being permitted user on behalf of the defendant No. 3 in Delhi.
(viii) The active Directors in defendants No. 2 and 3 are same set of persons. Being the assignee of the mark the defendant No. 3 is now trying to use the trademark of the plaintiff through defenda
