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2019 Supreme(Del) 1546
IN THE HIGH COURT OF DELHI
G.S. SISTANI, JYOTI SINGH, JJ.
Société Des Produits Nestlé, S A & Another - Petitioner
Versus
Kaira District Cooperative Milk Producers Union Ltd. & Another - Respondent
FAO (OS) (COMM). No. 34 of 2018
Decided On : 10-07-2019
For the Petitioners:Hemant Singh, Mamta Rani Jha, Manish Kumar Mishra, Ankit Arvind, Akanksha Singh, Rohan Krishnan, Advocates.
For the Respondents:Jayant Bhushan, Senior Advocate, Snehal Kakrania, Advocates.
The court emphasized that interim orders should be based on a prima facie view and that the tests of balance of convenience and irreparable loss or injury should be applied to the relief sought by the applicant.
Headnote:
Trade Mark - Interim Order - Trade Marks Act, 1999, Sections 28, 29, 34 - The court confirmed the interim order directing both parties to maintain status quo about the use of sub-brand 'A+' in relation to the respective goods during the pendency of the suit.
Fact of the Case:
The plaintiffs sought to restrain the defendants from using the trade mark 'A+' in relation to cheese, packaged milk, or any other milk products. The plaintiffs claimed to have acquired the rights to the mark 'A+' for milk and milk products and launched their products under the mark. The defendants contended that they had been using the mark 'A+' in conjunction with 'Amul' for cheese slices since 2011 and challenged the assignment of the mark to the plaintiffs.
Finding of the Court:
The court found that the interim order directing both parties to maintain status quo about the use of sub-brand 'A+' was justified, but the restriction on the plaintiffs to use the mark 'A+/a+' for goods other than milk or dahi was incorrect. The court held that the defendants could have pursued remedies against the plaintiffs for alleged passing off of their mark and proving prior user.
Issues: The main issue was whether the court could have directed the plaintiffs to maintain status quo in respect of the goods being manufactured by them during the pendency of the suit.
Ratio Decidendi: The court held that the interim order was justified to maintain status quo, but the restriction on the plaintiffs was incorrect as the defendants could have pursued independent proceedings against the plaintiffs for alleged passing off of their mark and proving prior user.
Final Decision: The appeal was partly allowed, setting aside the portion of the impugned order restraining the plaintiffs from applying the mark 'A+/a+' to products other than milk or dahi. The order directing status quo against the defendants remained unaffected.
JUDGMENT :
G.S. SISTANI, J.
1. Present appeal lays challenge to the interim order dated 05.12.2017 passed by a Single Judge of this Court on an application filed by the appellants in a suit filed for infringement of trade mark against the respondents whereby the ad interim order dated 30.05.2012 was made absolute. By the Order dated 30.05.2012, both the parties were directed to maintain status quo with respect to the use of the sub-brand ‘A+’ in relation to the respective goods that the parties were manufacturing as on 30.05.2012 during the pendency of the suit.
2. For the ease of reference, the parties are referred to in accordance with their position in the suit.
3. The present suit pertains to the trademark ‘A+/a+’ used by the parties. The plaintiffs are selling milk and dahi (yogurt) under the sub-brand ‘a+’ in conjunction with their brand ‘Nestlé’; while the defendants were applying the said mark ‘A+’ to cheese slices in combination with their brand name ‘Amul’.
4. Brief facts necessary to be noticed for disposal of this appeal are that the plaintiffs had filed CS (OS) 1675/2012 inter alia seeking to restrain the defendants from using the trade mark ‘A+’ with or without any prefix or suffix in respect of cheese, packaged milk or any other milk products. It was averred by the plaintiffs that pursuant to an internal branding study, they learnt that the plaintiff no.2 did not have any sub-brand for its milk and dahi products, which were sold only under ‘Nestlé’. Thereafter, it conducted a consumer study and selected ‘a+’ to be used as a sub-brand in conjunction with ‘Nestlé’ for milk and dahi.
5. It was the case of the plaintiffs that they conducted a search at the Trade Marks Registry and found “A+ logo” to have been registered in class 29 in favour of one Ajit Singh Om Prakash Ltd. The said proprietor assigned its rights in favour of the plaintiffs by a deed of assignment dated 26.08.2011 limited to the goods, i.e. “milk and milk products” for Re.1/-. Subsequently, application was also filed by the plaintiff no.1 for recording of its name as the subsequent proprietor and the same is pending. The plaintiff no.2 launched its milk and dahi products under the marks ‘Nestlé a+’ at a press conference on 01.12.2011 and claims to have garnered tremendous sales.
6. The plaintiffs further pleaded that in a couple of days of the launch, a notice dated 05.12.2011 was received from the defendants claiming to be the proprietors of the mark ‘A+’. The notice was received on 07.12.2011 and replied to by the plaintiffs on 08.12.2011 drawing attention to the deed of assignment and calling upon the defendants to discontinue the use of ‘A+’ as it amounted to an infringement of their proprietary right in the mark ‘a+’. It was averred that the parties tried to settle the matter, however, when efforts failed, the suit was filed by the plaintiffs. Along with the suit, the plaintiffs filed IA 10759/2012 seeking an interim injunction against the defendants.
7. The suit came for hearing before a Single Judge of this Court on 30.05.2012 when the counsel for the plaintiffs submitted that they were not pressing for interim stay. However, the Single Judge while issuing notice directed both parties to maintain status quo about the use of the sub-brand ‘A+’ in relation to the goods as on the said date.
8. The defendants filed a common written statement contending that they had been using the mark ‘A+’ in conjunction with ‘Amul’ since 02.06.2011 on cheese slices and had also applied for its registration. The defendants have further challenged the assignment in favour of the plaintiffs.
9. On 16.09.2014, issues were framed in the suit, which are mentioned in paragraph 13 of the order impugned before us. Thereafter, the proceedings in the suit were stayed as proceedings for cancellation of trade mark of the plaintiffs were pending before the Intellectual Property Appellate Board.
10. In this background, the Single Judge disposed of IA 10759/2012 by the impugned order co
