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IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Lt Overseas North America Inc & Anr. – Appellants
Versus
Krbl Limited – Respondent
CS(COMM) 347 of 2022
Decided On : 24-02-2023
TRADE MARK - INFRINGEMENT - [ROYAL] - [RICE] - [CPC, 1908, Order XXXIX Rules 1 and 2] - The court considered whether the word 'ROYAL' is descriptive or suggestive of the product-rice and whether the use of the same by the defendant is merely to depict the quality of its rice, thereby acting as a defence for the defendant to the claim of infringement made by the plaintiffs. The court also considered the effect of device mark registration and the defendant's claim under Section 30(2)(a) and 35 of the Trade Marks Act, 1999. The court restrained the defendant from using the packaging complained of by the plaintiff during the pendency of the present suit, but allowed the defendant to use the proposed packaging.
Fact of the Case:
The plaintiffs filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, praying for an order restraining the defendants from using the mark 'ZABREEN ROYAL' for their Basmati Rice, which the plaintiffs claimed was identical/deceptively similar to their mark 'ROYAL'. The plaintiffs alleged that the defendants' use of the impugned mark would result in causing irreparable harm and injury to the plaintiffs.
Finding of the Court:
The court found that the word 'ROYAL' is not descriptive of the product-rice, but is a laudatory word. The court also found that the defendant's use of the word 'ROYAL' was merely to depict the quality of its rice, which acted as a defence for the defendant to the claim of infringement made by the plaintiffs. The court restrained the defendant from using the packaging complained of by the plaintiff during the pendency of the present suit, but allowed the defendant to use the proposed packaging.
Issues: The main issue was whether the defendant's use of the word 'ROYAL' for their Basmati Rice constituted infringement of the plaintiffs' mark 'ROYAL'.
Ratio Decidendi: The court held that the use of the word 'ROYAL' by the defendant was merely to depict the quality of its rice, which acted as a defence for the defendant to the claim of infringement made by the plaintiffs. The court also considered the effect of device mark registration and the defendant's claim under Section 30(2)(a) and 35 of the Trade Marks Act, 1999.
Final Decision: The court restrained the defendant from using the packaging complained of by the plaintiff during the pendency of the present suit, but allowed the defendant to use the proposed packaging.
JUDGMENT
I.A. 8103/2022
1. The present application has been filed by the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereinafter referred to as `the CPC.) praying for an order restraining the defendants from producing, selling, offering for sale or advertising, promoting its goods or services, exporting or enabling advertising campaigns either directly or indirectly in physical/electronic form, internet, websites or in any manner, any product bearing the impugned mark/package `ZABREEN ROYAL'/[IMG] which is identical/deceptively similar to the plaintiffs' mark/label `ROYAL' and related marks so as to result in infringement or passing off or unfair competition or their dilution; and also to disclose details of the parties involved in the manufacturing, marketing, distributing, selling and labeling of the impugned products or any other party connected with the mark of the defendant.
CASE OF THE PLAINTIFFS
2. It is the case of the plaintiffs that the plaintiffs are in the business inter alia of processing, marketing and exporting rice. The plaintiff no. 1 is the subsidiary of the plaintiff no. 2. The predecessor of the plaintiff no.1, `M/s Aromatic Foodstuff Trading`, coined and conceived the plaintiffs' mark `ROYAL' in 1989. The mark was later assigned to `M/s Kusha Inc.' (a wholly owned subsidiary of the plaintiff no.1, incorporated under the laws of the State of California, the United States of America) on 14.10.2000, who in turn assigned them to the plaintiff no. 1 vide Assignment Deed dated 16.12.2008. It is asserted that an application for registration of the mark was filed and the mark was registered in the year 2003. Thereafter, `M/s Kusha Inc.' assigned the plaintiffs' marks to the present plaintiff no. 1.
3. The plaintiffs assert that since the adoption by the plaintiff no.1, the plaintiffs' marks have been put to extensive and continuous commercial use in India and rice has also been exported internationally under the said mark. The plaintiffs submit that they have also made inroads across the globe to markets like the USA, Canada, Australia, Mexico and Pakistan. It is asserted that the yearly turnover of the plaintiffs for the sales made under the mark `ROYAL' since 2007-08 till 2020-21 has increased from Rs.21.75 Crores to 678.19 Crores. The plaintiffs give the yearly turnover figures in paragraph 4 of the Plaint.
4. The plaintiffs assert that they have expended large amounts of money in advertisement and promotional expenses, with the same increasing from Rs.15 Crore in the Financial Year 2015-16 to Rs.21 Crore in the Financial Year 2020-21.
5. It is asserted that the plaintiff no.2 and its group companies own five state-of-the-art rice plants and are ranked amongst the top fifty food processing companies in North India and among the top fifty companies by `Dun and Bradstreet 8th Edition of the India`s Top 500 Companies 2007`. The plaintiffs also assert that they are among the first few in the rice industry to obtain an ISO 9001-2000 certification, as also certifications like HACCP, SQF, BRC and Organic and EIC.
6. It is asserted that the plaintiff no. 1 holds the following registrations for its mark `ROYAL' and related marks:
| Trade Mark | Applicant | Registration Date/Application No. | Class/Goods | Current Status |
| [IMG] | LT Overseas North America, Inc. | 1175315 | 29: All Kinds Of Edible-Oils And Fats, Preserves And Pickles, Skimmed Milk-Powder, Milk, Milk-Preparations, Cream, Butter, Cheese, Yogurt, Malai, Curds And Dairy-Products, Eggs And Potato-Crisps, Chatni, Jellies And Soups, Fish, Meat And Meat-Extracts, Preserved/Dried & Cooked Fruits And Vegetables And All Such Other Edible Goods Included In Class 29. | Registered (Valid up to 17/02/2023) |
| [IMG] | LT Overseas North America, Inc. | 1548937 | 39: packaging of rice. | Registered (Valid up to 12/04/2027) |
| [IMG] | LT Overseas North America, Inc. | 1339882 | 35: Business Management, Advertising, Distribution, Marketing, Wholesale And Retail Services Relating To |
AI
The use of a laudatory word, such as 'ROYAL', by the defendant to depict the quality of its product can act as a defence against a claim of infringement by the registered proprietor of the trade mark....
The principle of prior user of a trademark prevails over subsequent registrations, especially when confusion or association is likely between goods and services of similar trade sectors.
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
The main legal point established in the judgment is that the use of deceptively-similar marks and logos, intended to deceive consumers and ride on the reputation and goodwill of the plaintiffs, const....
The judgment establishes the principle that phonetic similarity between trademarks can constitute infringement, and lack of a credible defense can lead to summary judgment in trademark cases.
The affixation of a registered trademark for export constitutes use in trade, establishing a prima facie case of infringement under the Trade Marks Act.
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