The affixation of a registered trademark for export constitutes use in trade, establishing a prima facie case of infringement under the Trade Marks Act.

JUDGMENT

I.A. 9604/2020 [U/Or. XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908]

1. The present application has been filed by the plaintiff praying for an order of ad-interim injunction restraining the defendant nos.1 and 4 from using, selling, exporting, advertising or in any other mode or manner dealing in or using the mark `TAJ MAHAL/, (word or device) (hereinafter referred to as `TAJ MAHAL').

FACTUAL BACKGROUND

I) CASE OF THE PLAINTIFF

2. It is the case of the plaintiff that the plaintiff is engaged in the business of processing, marketing and exporting rice of various kinds, including basmati rice and non-basmati rice. It adopted and has used the mark `TAJ MAHAL' in relation to rice since the year 1978 and has been selling the same all over India, as also exporting to Europe, U.S.A., Canada and the Middle East since the year 1978. The said mark is also registered in Class 30 under the provisions of the Trade Marks Act, 1999 (in short, `the Act') read with the Trade Marks Rules, 2002, as under:

S. NO.	Trade Mark	Class	Registration No.	Date of Application
1.	Taj Mahal (Word)	30	338004	30/06/1978
2.		30	387177	03/03/1982

3. The said registrations were applied for by the predecessor-partnership firm of the plaintiff, which assigned the said trade marks to the plaintiff vide Assignment Deed dated 23.03.2018. The plaintiff has also applied to seek international registrations of the said marks in various countries, the details whereof are given in paragraph no. 8 of the amended Plaint. The plaintiff claims that its goods, that is, rice, is available across the world.

4. The plaintiff gives its sales figures from the years 1982-83 to 2019-20 in paragraph no. 9 of the amended Plaint. The plaintiff claims that it has also been extensively advertising the said mark by expending large amounts of money, thereby gaining goodwill and reputation in the mark.

5. The plaintiff had earlier filed the present suit impleading the defendant no.1 and its directors as the defendant nos. 2 and 3 respectively; the `Principal Commissioner of Customs, Custom House, Mundra' as the defendant no.4; and `Master Cert LLP' as the defendant no.5.

6. In the original Plaint, it was pleaded that the defendant nos. 1 to 3 have adopted the same mark `TAJ MAHAL' for the manufacture and export of rice and a complaint regarding the same was made to the defendant no.4 as the consignment of rice bearing the said mark was being exported to the Kingdom of Saudi Arabia (in short, `Saudi Arabia') via Mundra Port at Gujarat. It was pleaded that as the erstwhile-defendant no.4 failed to act on the complaint, the present Suit was filed. It was further pleaded by the plaintiff that the erstwhile-defendant no.4 was impleaded for the proper implementation of any order passed by this Court.

7. The plaintiff impleaded `Master Cert LLP' as the defendant no.5-stating that it is the investigating agency that issues the Certificate of Conformity for goods to be exported to Saudi Arabia and has issued the same in favour of the defendant no.1. It was pleaded that as the defendant no.5 would be in possession of the photographs of the infringing materials, its presence in the Suit as a necessary party is imperative.

8. As far as `Abdul Aziz Hamad Alfares & Sons Company', which is the present defendant no.4 per the Amended Memo of Parties, in the original Plaint, it was alleged that the defendant no.4 was the distributor of the plaintiff for more than ten years, and that the plaintiff was continuously from the years 1999 to 2009 supplying rice under the mark `TAJ MAHAL' to the defendant no.4 for sale in Saudi Arabia. The defendant nos. 1 to 3, despite knowledge of the fact that the said buyer is a former distributor of the plaintiff, started supplying rice to the defendant no. 4 under the trade mark of the plaintiff, that is, `TAJ MAHAL'.

9. Most importantly, in the original Plaint, the defendant no.4 was not impleaded as a party.

10. The Suit was firs