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2023 Supreme(Del) 4856
IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Modern Snacks Pvt. Ltd. – Appellant
Versus
Modern Foods Enterprises Pvt. Ltd. – Respondent
CS(COMM) 299 of 2020 with CS(COMM) 460 of 2020 & I.A. 17069 of 2022
Decided On : 04-07-2023
Mr.S.K.Bansal & Mr.Ajay Amitabh Suman, Advocates, for the Plaintiff in CS(COMM) 299/2020 and for the Defendant in CS(COMM) 460/2020 & I.A. 17069/2022.
Mr.Chander M. Lall, Senior Advocate with Ms.Shikha Sachdeva, Ms.Mugdha Palsule, Advocates, for the Defendant in CS(COMM) 299/2020 and for the Petitioner in CS(COMM) 460/2020 & I.A. 17069/2022.
The main legal point established in the judgment is that the plaintiff, as the prior adopter of the mark 'MODERN', had established a prima facie case in its favor. However, the balance of convenience favored the defendant, who had been using the mark since 1990 and had obtained registrations.
Headnote:
MODERN - Trade Mark Dispute - Trade Marks Act, 1999, Section 142 - Summary of Acts and Sections: The court discussed the plaintiff's claim of being the prior adopter of the mark 'MODERN' and the defendant's claim of being an honest concurrent user. The court also considered the similarity of goods, the balance of convenience, and the defendant's registration of the mark. The court restrained the defendant from using the mark 'MODERN' for goods other than those being sold at the time of the suit and directed the defendant to disclose its product range and sales turnover.
Fact of the Case:
The plaintiff, a renowned corporation, claimed to be the prior adopter of the mark 'MODERN' for bakery products. The defendant, engaged in the manufacturing and marketing of goods under the same mark, claimed to be an honest concurrent user. The plaintiff sought an injunction against the defendant for infringement of the mark.
Finding of the Court:
The court found that the plaintiff had established a prima facie case in its favor as the prior adopter of the mark 'MODERN'. However, the balance of convenience favored the defendant, who had been using the mark since 1990 and had obtained registrations. The court restrained the defendant from expanding its product line using the mark 'MODERN' and directed the defendant to disclose its product range and sales turnover.
Issues: The main issues were the prior adoption of the mark 'MODERN' and the defendant's claim of being an honest concurrent user. The court also considered the similarity of goods, the balance of convenience, and the defendant's registration of the mark.
Ratio Decidendi: The court held that the plaintiff had established a prima facie case as the prior adopter of the mark 'MODERN'. However, the balance of convenience favored the defendant, who had been using the mark since 1990 and had obtained registrations. The court restrained the defendant from expanding its product line using the mark 'MODERN' and directed the defendant to disclose its product range and sales turnover.
Final Decision: The court restrained the defendant from using the mark 'MODERN' for goods other than those being sold at the time of the suit and directed the defendant to disclose its product range and sales turnover. The case was listed for further proceedings before the Joint Registrar (Judicial).
Based on the defendant's stance, the principle of estoppel may indeed apply. The defendant asserts that the plaintiff has delayed in asserting its rights and has prior knowledge of the defendant's use of the mark "MODERN." Additionally, the defendant claims that the plaintiff has misrepresented facts regarding its date of first use and has suppressed relevant information about its registration and use. These factors suggest that the plaintiff's claim could be barred by the doctrine of estoppel, as the plaintiff's delay and conduct might have led the defendant to reasonably believe that its continued use was lawful and that the plaintiff would not contest it. Therefore, the defendant's position indicates that the principle of estoppel could be invoked to prevent the plaintiff from asserting rights inconsistent with the defendant's established use and rights in the mark (!) (!) .
JUDGMENT
Navin Chawla, J.
I.A. 6478/2020 in CS (COMM) 299/2020
I.A. 9542/2020 in CS (COMM) 460/2020
1. These are two cross suits, filed between M/s Modern Food Enterprises Pvt. Ltd. (hereinafter referred to as the `plaintiff') and M/s Modern Snacks Pvt. Ltd. (hereinafter referred to as the `defendant').
2. The defendant has filed CS(COMM) 299/2020 under Section 142 of the Trade Marks Act, 1999 (hereinafter referred to as the `Act') seeking permanent injunction restraining the plaintiff from issuing groundless threats in relation to the use of the trade mark `MODERN', used by the defendant in relation to Namkeens, Snacks, Confectionery, savouries and other allied and related goods.
3. On the other hand, C.S.(COMM.) 460/2020 has been filed by the plaintiff seeking permanent injunction against the defendant from infringing and/or passing off its trade mark `MODERN' and its copyright.
4. As the above applications seeking interim relief arise out of same factual disputes, they were taken up together for hearing and are being disposed of by this common judgment.
FACTUAL BACKGROUND
Case of the Plaintiff
5. The plaintiff, in its plaint, states that its predecessor in title, that is, `M/s Modern Food Industries India Limited' was a Public- Sector Undertaking under the control of the Ministry of Agriculture/Ministry of Food Processing Industries and was incorporated in the year 1965. It started commercial production in 1968. On 31.01.2000, the Government of India disinvested 74% of its shareholding in the plaintiff company in favour of Hindustan Lever Limited, thereby becoming a Joint Venture. In 2002, the Government of India disinvested the balance shareholding also in favour of HLL. On 01.04.2016, `Everfoods Asia Pvt. Ltd.' acquired 100% shareholding of the plaintiff from Hindustan Unilever Limited (name of HLL had been changed to HUL in 2014). The trade marks of the plaintiff remained in the name of the plaintiff and were not transferred.
6. The plaintiff states that it is an internationally renowned corporation engaged in the manufacturing of bakery products such as biscuits, cakes, bread, bread crumbs, bread stuffings, buns, cookies, pies, pav, pizza bread and breakfast cereals. It adopted the trade mark `MODERN' in the year 1965 for bread and has been using the same continuously and uninterruptedly since then. It launched a bread with Vitamins fortification in 1968; a sweet bread in Chennai in 1971; India's first Fruity Bread in 1981; and Wheatamin- India's first Brown Bread in 1991. The plaintiff further claims that it is a leader in the said category of goods in India.
7. The plaintiff states that the trade mark `MODERN' is a well- recognised brand that pioneered and created the bread industry in India. It is depicted by the plaintiff in a stylized manner in small letters, only the letter `R' is depicted in capital. A representation of the plaintiff's trade mark is as under:
[IMG]
8. The plaintiff asserts that in or about 1970, its predecessor-in-title devised a distinctive packaging for its bread under the mark `MODERN', having a blue and orange square shaped pattern on a white coloured background with the trade mark `MODERN' written in Hindi and English language on the packaging in a distinctive manner in the colour white on a rectangular blue coloured background, which has been registered as a copyright in favour of the plaintiff, bearing copyright registration no. A- 9291/73. The same is depicted hereinbelow:
[IMG]
9. The plaintiff claims that sometime in 2010, it introduced a new packaging for its bread, which had a lion cartoon character, the crop device, and trade mark `MODERN' depicted in the colour white on a blue background. The words `Family Shakti' were also written on the label, however, the style of writing `MODERN' remained the same. The logo also had different coloured square blocks on the side, in the colours red and green. The said packaging is depicted hereinbelow:
[IMG]
10. The plaintiff claims that in 20
