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2008 Supreme(Del) 1310
IN THE HIGH COURT OF DELHI
Badar Durrez Ahmed, J.
S. NARENDRA KUMAR AND CO. — Appellant
Vs.
EVEREST BEVERAGES AND FOODS INUDSTRIES AND ANOTHER — Respondent
I.A. No. 2463 of 2008, C.S. (OS) 355, 3031 of 2008
Decided On : 03-07-2008
Advocate Appeared:
For the Appellants : Jagjit Singh, Shekhar Guj.
For the Respondents: S.K. Bansal, Pankaj Kumar.
Headnote:
Trademark Infringement - Trademark Law - Code of Civil Procedure, 1908 - [EVEREST] - Trademark Infringement - Trademark Rules 2002 - [Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908] - [Section 27(2), Section 28(1), Section 34 of the Trademarks Act, 1999] - The court discussed the plaintiff's claim of trademark infringement under the Trademarks Act, 1999 and the defense of prior user raised by the defendants. The court analyzed the provisions of Section 27(2), Section 28(1), and Section 34 of the Trademarks Act, 1999 and their implications on the case. The court found that the defendants had set up a plausible defense of prior user, which influenced the decision to vacate the interim injunction for certain products.
Fact of the Case:
The plaintiff filed a suit for trademark infringement under the Trademarks Act, 1999, alleging that the defendants used the mark 'EVEREST' in relation to similar goods, infringing the plaintiff's registered trademark 'EVEREST'. The defendants claimed prior user of the mark 'EVEREST' dating back to 1965 and raised objections of delay and acquiescence by the plaintiff.
Finding of the Court:
The court found that the defendants had set up a plausible defense of prior user, which influenced the decision to vacate the interim injunction for certain products. The court also held that delay in filing the suit would not bar the plaintiff from seeking a remedy for infringement, but the defense of prior user took precedence over the plaintiff's absolute right conferred by Section 28(1) of the Trademarks Act, 1999.
Issues: The key issues in the case were the plaintiff's claim of trademark infringement, the defense of prior user raised by the defendants, and the objections of delay and acquiescence by the plaintiff.
Ratio Decidendi: The court's decision was influenced by the defendants' plausible defense of prior user, which took precedence over the plaintiff's absolute right conferred by Section 28(1) of the Trademarks Act, 1999. The court also held that delay in filing the suit would not bar the plaintiff from seeking a remedy for infringement.
Final Decision: The court vacated the interim injunction for certain products of the defendants, such as tomato ketchup, sauces, vinegar, fruit juices, non-alcoholic drinks, noodles, and pickles, based on the defendants' defense of prior user. The injunction order remained in effect for the plaintiff's products, such as milk masala and spices of all kinds, for which the defendants had not claimed any user, let alone prior user.
JUDGMENT :
Badar Durrez Ahmed, J.
1. Is No. 2463/2008 has been filed by the plaintiff under Order 39 Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as the 'CPC') seeking an interim injunction restraining the defendants from using the mark 'EVEREST' in respect of any of their products falling under Classes 29 and 30 of the Fourth Schedule to the Trademark Rules, 2002 inasmuch as such use allegedly amounts to infringement of the plaintiff's alleged registered trademark 'EVEREST'. By an order dated 25.02.2008 this Court had granted an ex parte ad-interim injunction against the defendants in respect of the use of the said mark 'EVEREST'. The defendants, after notice of the said order dated 25.02.2008, have not only filed their written statement in the suit and reply to the plaintiff's application under Order 39 Rules 1 and 2 CPC but have also filed an independent application (IA No. 3031/2008) under Order 39 Rule 4 seeking vacation of the ex parte ad interim injunction granted by this Court on 25.02.2008. Both the applications are taken up together.
2. In the plaint the plaintiff had stated that it is the proprietor of the registered trademark 'EVEREST' in classes 29 and 30 of the Fourth Schedule to the Trademark Rules 2002 under a deed of assignment dated 26.09.1994 executed by the original owners - (1) Smt. Gulabben Nand Lal Shah (2) Sh. Vadilal Nandlal Shah and (3) Sh. Narendra Chamapk Lal Shah who were allegedly jointly carrying on business under the name and style of "Vadilal Champak Lal & Co.". That firm is said to have been conducting its business from 1967 to 1995 where after the plaintiff firm has been running the business stemming out of the business of Vadilal Champak Lal & Co.
3. It has also been alleged in the plaint that the plaintiff is carrying on the business of manufacturing and marketing masalas of different types and that they are well known manufacturers and merchants of all kinds of spices, pan masala, betel-nuts, papad, pickles, cosmetics, heena powder (mehandi powder) etc. since the year 1967. It has also been alleged that the plaintiff has been using the registered trademark "consisting of and containing the word 'EVEREST' since the year 1967 in respect of their aforesaid products". It is stated that the plaintiff is the registered proprietor of the trademark 'EVEREST' in many classes including Classes 29 and 30 of the Fourth Schedule to the Trademark Rules 2002 in respect of goods falling in these classes which include "vinegar , sauces, spices of all kinds including pickles". It is further stated that the plaintiff has about 40 registered trademarks and they are all registered and renewed up to date. The list of the trademarks and renewals is set out in paragraph 6 of the plaint. The earliest registration indicated in the said list is of 13.07.1981 and that pertains to Class 31. The earliest registration in respect of Class 30 (spices of all kinds, tea masala and milk masala) bears No. 431291 and is of 21.12.1984. The earliest registration under Class 29 is registration No. 461928 dated 20.10.1986 in respect of "preserved, dried, cooked and tinned fruits and vegetables, jellies, jams, milk and other dairy products, preserves and pickles". There is another registration bearing No. 461929 of the same dated i.e. 20.10.1986 under Class 30 which is, inter alia, in respect of vinegar, sauces and spices of all kinds. On going through the entire list given in paragraph 6 of the plaint it is apparent that the trademark registrations in respect of which the plaintiff claims proprietorship primarily relate to spices of all kinds, tea masala and milk masala. There are a few registrations as noted above appearing for the first time on 20.10.1986 under Class 29 and 30 which cover other products such as preserved, dried, cooked and tinned fruits and vegetables, jellies, jams, vinegar, sauces and spices.
4. It was alleged by the plaintiff that the defendants have used the identical trademark 'EVE
