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IN THE HIGH COURT OF DELHI AT NEW DELHI
Sanjeev Sachdeva, Tushar Rao Gedela, JJ.
Sachin Gupta Trading As Gcmc Masala Co. – Appellant
Versus
Kbm Foods Pvt. Ltd. – Respondent
FAO(OS) (COMM) 69 of 2021 & CM. APPL.15117 of 2021
Decided On : 03-07-2023
PASSING OFF - TRADEMARK - Code of Civil Procedure, 1908, Order XXXIX Rules 1 and 2 - Trade Marks Act, 1999 - Copyright Act, 1957 - [GAI CHAAP] - Trademark Infringement - Deceptive Similarity - Trade Dress - [Code of Civil Procedure, 1908, Order XXXIX Rules 1 and 2, Trade Marks Act, 1999, Copyright Act, 1957]
Fact of the Case:
The Respondent/Plaintiff filed a suit against the Appellant/Defendant for trademark infringement, claiming prior use of the trademark 'GAI CHAAP' and 'COW' device since 1969. The court found that the Appellant's label was deceptively similar to the Respondent's, leading to confusion in the market.
Finding of the Court:
The court found that the Respondent had established a strong prima facie case for grant of an injunction, as they were the prior adopter of the mark and there was a high likelihood of deception in the mind of the consumer. The balance of convenience was in favor of the plaintiff, and failure to grant an injunction would cause irreparable loss and injury.
Issues: Deceptive Similarity - Prior Adoption of the Mark - Continuous Commercial User - Goodwill and Reputation - Likelihood of Confusion - Balance of Convenience - Irreparable Loss and Injury
Ratio Decidendi: The court held that the Respondent had established prior adoption, continuous commercial user, goodwill, and reputation of the mark, and deceptive similarity between the marks. It concluded that the balance of convenience favored the plaintiff and failure to grant an injunction would cause irreparable loss and injury.
Final Decision: The appeal was dismissed, and the Appellant was restrained from using the mark 'Gai Chaap', device of 'COW', and other essential features of the label and trade dress of the Respondent, either in isolation or in conjunction and deception in the course of trade.
JUDGMENT
Sanjeev Sachdeva, J. Appellant impugns order dated 06.04.2021, whereby a Learned Single Judge has allowed the application of the respondent/plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 and restrained the Appellant (Defendant in the Suit) from manufacturing, marketing, selling, offering for sale or advertising its goods i.e. spices by using the mark "Gai Chaap", device of "COW" and the other essential features of the label and trade dress of the Respondent/Plaintiff either in isolation or in conjunction and deception in the course of trade and thereby passing off its goods as that of the plaintiff's.
2. Respondent/Plaintiff filed the subject Suit contending that the predecessor of the Respondent, Karol Bagh Masala Supplies Company (KBMSC) was formed vide a partnership deed dated April 22, 1969 and claimed to be using the trademark "GAI CHAAP' along with the `COW' device on its products since 1969.
3. Respondent claimed that these marks had been applied for registration in Class 30 under the Trade Marks Act, 1998 vide trademark application No. 748292, 748285 and 748288 and has been in use since 1969.
4. It is alleged that KBMSC had two partners: Om Prakash Aggarwal and Kishan Chand Gupta. Om Prakash had three sons, Mr. Dinesh Kumar Aggarwal, Sanjay Aggarwal and Vikas Aggarwal. It is alleged that on 29.10.1995, Kishan Chand Gupta retired and Dinesh Kumar and Sanjay Aggarwal were inducted into the partnership firm, KBMSC.
5. It is further alleged that in 2001, KBM Spices Pvt. Ltd (now known as KBM Foods Pvt. Ltd, Respondent herein) was incorporated. The purpose of forming the company was to acquire the running concern/business of the partnership KBMSC. The partners of the said partnership firm: Om Prakash, Sanjay Aggarwal and Dinesh Kumar became directors of the said company.
6. KBMSC was dissolved vide dissolution deed dated 23.01.2002 and the Respondent company acquired all the assets, tangible as well as intangible, liabilities, goodwill, business, knowhow trademarks etc. of the firm by way of Agreement of Succession of Business dated 23.01.2002.
7. It is alleged that all goodwill, trademark rights and assets of the aforesaid firm were assigned to the Respondent herein vide Assignment Deed dated 30.01.2002. Thereafter, Respondent/Plaintiff allegedly made slight changes to its label dress and get up and in 2013 applied for the registration of this `trade dress' as application no. 2802285. It is however contended that the Respondent has been using the trademarks "GAI CHAAP" and "COW" device since the year 1969 and has claimed user with respect to the modified trade dress from the year 2013.
8. As per the Respondent, it came across Appellant's Trademark Application bearing no. 3673104 dated 08.11.2017 and felt that it was a virtual replica of its own label and filed an opposition to the said trademark application and also filed the subject Suit.
9. In the subject suit, Respondent had alleged that the Appellant with a mala fide intent illegally got the trademark "GCMC" along with a "COW" device registered with the user details as "proposed to be used".
10. On the other hand the case of the Appellant is that his predecessor (father) had been engaged in the same business since long and adopted and started using the label "GCMC with a cow device" in relation to spices in April 2017.
11. It is contended that the Appellant's trademark is duly registered under No. 3531286 in Class 30 under the Trade Marks Act, 1999.
12. It is contended that the artwork involved in the Appellant's trademark/label is original artwork of which he is the owner and proprietor and that, the same is duly registered under the provisions of the Copyright Act, 1957 under No. A-120153/2017 w.e.f. 13.09.2017.
13. By the impugned order the Learned Single Judge has held that prima facie, the overall getup of the packaging of the Appellant herein, with "COW" device is deceptively similar/identical to that of the Res
The main legal point established in the judgment is the protection of trademarks and prevention of passing off, based on prior adoption, continuous commercial user, goodwill, and deceptive similarity....
A prior user of a trade mark has superior rights in passing off actions, preventing unauthorized use by subsequent users, especially when marks are likely to confuse consumers.
The court found that despite phonetic similarity, the distinctiveness of trade marks and differences in intended consumer bases negate the likelihood of confusion and passing off.
Mere addition of a house mark, especially when such house mark also has a certain reputation and goodwill, would obviate any chance of confusion in the mind of an unwary consumer.
The central legal point established in the judgment is the protection of registered trademarks, the establishment of goodwill and reputation, and the likelihood of confusion among consumers in passin....
The court established that the rights of the prior user of a trademark are superior to those of a subsequent user, emphasizing the elements of goodwill, misrepresentation, and damage in passing off c....
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