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Gujarat High Court
Judgename :P.B.Majmudar
R.N.BHAGAT - Appellant
Versus
M/S.BHAGAT MARKETING CORP. - Respondent
Appeal From Order 337 Of 2006
Decided On : 02/05/2007
Whether interim injunction restraining defendants to adopt trademark name Bhagat justified in the facts of the case?
Head Note :
Trade Marks Act, 1999 - Sections 18(A), (B), (C), 23, 28, 29, 33 and 34 - Civil Procedure Code, 1908 (Central Act 5 of 1908) - Order 43 - Appeal - Interim injunction - Restraining defendants to adopt trade mark name Bhagat - Defence of earlier user and acquiescence - Finding as to - Sustainability - It is the case of defendants that plaintiffs and defendants are family members and the predecessor-in-title of the trade mark was father of Defendant No. 1 and he started his business of - Dhanna-ni-dal" with a brand name and trade mark of "Bhagat Supreme" in 1976 - Since then defendants are using the name of "Bhagat" openly in the market within the knowledge of plaintiff - In that view of the matter plaintiffs are guilty of acquiescence and not entitled to any interim relief - Court considered the evidence on record and found that defendants have failed to prove that continuously said word "Bhagat" is used by them - On the contrary it is clear that the word "Bhagat" was not even mentioned by defendants in the various bills - It appears defendants have tried to add word "Bhagat" subsequently on realising the marketability and good-will achieved by plaintiffs in connection with the said brand name - It is prima facie established by plaintiff that they are prior user of word "Bhagat" - In view of the said facts delay would not come in the way of plaintiffs and injunction can be granted and rightly granted by trial Court in favour of plaintiffs which calls for no interference - The defendants can very well continue the business in any other manner except using the word "Bhagat" - However, Court allowed defendants to clear up the existing material provided they furnish undertaking to the effect that they shall clear up material by 28.02.2007 - The trial Court order of injunction is confirmed subject to said modification.
Held :
The plaintiffs are continuously using word "BHAGAT" in their business and the defendants have failed to prove that continuously said word "BHAGAT" is used by them. Series of documents clearly show that for a long span of many years, the word "BHAGAT" was not even finding place in various bills which are produced on record, that itself, would show that the defendants have tried to add word "BHAGAT" subsequently on realizing the marketability and goodwill achieved by the plaintiffs in connection with said brand name. It is prima facie established by the plaintiffs that they are prior user so far as word "BHAGAT" is concerned and it is continuously used by them in their business. In view of various decisions of the Supreme Court and in view of the fact that the plaintiffs have been able to prove that they are prior user, the delay would not come in the way of the plaintiffs and injunction can be granted in their favour. Considering the aforesaid aspect, arguments about acquiescence or delay cannot be placed into service by the defendants in the present case, as wrong can be prevented at any time. The trial Judge has considered the question about prior user as well as documentary evidence in detail in Paragraphs GG and HH. [Para 55]
The order of injunction granted by the trial Court restraining the defendants from using the word "BHAGAT" in its business is not required to be interfered with, especially, when the voluminous documentary evidence, prima facie, suggests that the plaintiffs are the prior user as far a word "BHAGAT" is concerned. It is also clear from above discussion that, defendants have started their business in the name of super "Dhana Dal" or Supreme "Dhana Dal" and subsequently, they have tried to incorporate word "BHAGAT" in their business. Prima facie, evidence regarding advertisement expenditure and the sell of the product of the plaintiffs is much more higher then that of the defendant. Not only that, on the basis of some document even if it can be presumed that the defendants are using the word "BHAGAT" since 1994, then also it can be said the plaintiffs are prior user. [Para 56]
Considering the aspect of the matter, it seems that the defendants are taking advantage of the goodwill and reputation achieved by the plaintiffs by using the word "BHAGAT", therefore, the injunction granted by the trial Court during the pendency of the suit is required to be confirmed. The defendants can very well continue the business in any other manner, except using the word "BHAGAT" as documentary evidence on record suggest that for a long period of time, the defendants continued to do their business by using the word Super "Dhana Dal" or Supreme "Dhana Dal". [Para 58]
Law Laid Down :
Passing off action is maintainable in law even against a registered owner of the trade mark.
Case Law Analysis :
Dhariwal Industries Limited vs. M.S.S. Food Products Limited, 2005 (1) CTMR 211 (SC) [Para 23];; N.R. Dongre & Ors. vs. Whirlpool Corporation & Anr., 1995 (5) SCC 714 [Para 33];; Cadilal Health Care Limited vs. Cadila Pharmacenticals Limited, 2001 (5) SCC 73 [Para 34];; Laxmikant V. Patel vs. Chetanbahi Shah & Anr., 2002 (3) SCC 65 [Para 35];; Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Limited, 2002 (2) SCC 147 [Para 36];; Dhariwal Industries Limited and Anr. vs. M.S.S. Food Products, 2005 (3) SCC 63 [Para 37];; Ramdev Food Products Pvt. Ltd. vs. Arbindbhai Rambhai Patel & Ors., 2006 (7) Supreme 224 [Para 38];; Duncans Agro Industries Ltd., vs. Somabhai Tea Processors P. Ltd., 36 (1) GLR 380 [Para 39].-Relied on
Conclusion :
In view of the evidence on record, plaintiff are prior user of the trade mark named Bhagat, therefore, grant of injunction by trial Court against defendants restraining them to use the same is justified and no interference is called for.
Cases Referred :
M/s. Power Control Appliances & Ors. vs. Sumeet Machines Pvt. Ltd., 1994 (2) SCC 448;; A. Venkatasubbaiah Naidu vs. S. Chelappan & Ors., 2000 (7) SCC 695;; Regency Sanitary Ware Pvt. Ltd. vs. Madhusudan Industries Limited, 2001 PTC 422 (Guj);; Premwati Bansal vs. Shri Ganpati International, 1999 PTC 640;; Priya Rubber and Plastic Industries vs. Bajrangbali Industries, 1995 AIHC 3680;; Biochem Pharmaceutical Industries vs. Pharma Synth Formulations Limited, 2000 PTC 361;; Bagla & Co. vs. Bagla Cosmetics, 2000 PTC 355;; Thakkar Balvantray Purshottamdas vs. Hasmukhbhai Ugarchand Patel, 35 (2) GLR 1714;; Ruston & Hornsaby Ltd. vs. The Zamindara Engineering Co., 1969 (2) SCC 727;; Parle Product (P) Ltd. vs. J.P. and Co., Mysore, 1972 (1) SCC 618;; The Gillete Company and Others vs. A.K. Stationery and Others, 2001 (21) PTC 513.
Decided in Favour of :
Appellant
Appeal Allowed Accordingly
( 1 ) BY filing this appeal under Order 43 of the Civil Procedure Code, the appellants, who are the original defendants of Civil Suit No. 2063/2006, which is filed before the City Civil Court, Ahmedabad have challenged the order passed by learned Trial judge below interim injunction application, by which learned Trial Judge has allowed interim injunction application submitted by the original plaintiffs and granted injunction as prayed for.
( 2 ) FACTS leading to the controversy are as under :
( 3 ) RESPONDENTS herein are the original plaintiffs of the aforesaid suit, which is filed for declaration and permanent injunction. By filing aforesaid suit, the plaintiffs have prayed that it may be declared that the defendants, their servants, agents, dealers and distributors have no right directly or indirectly to adopt the trade mark 536230 and 668188 and/or use the trade name "bhagat" or "r. N. Bhagat" or "n. S. Bhagat" or any other mark, name, logo, trading style, corporate name similar or deceptively similar to the word "bhagat". Permanent injunction is also sought for in the suit to the effect that the defendants may be restrained from adopting or using in relation to its business, service, goods, products including all types of "dhana ni Dal" and allied products falling under Class 30 of the Trademarks Act, 1999, Trademark no. 536230 and 668188 and/or any deceptively similar marks/name/word, which would pass off or enable others to pass off the defendants goods as that of plaintiff no. 1 firm. It is also prayed that the defendants may be directed to hand over the infringed material to the plaintiffs. The plaintiffs also prayed for a decree of Rs. 50 Lacs with interest as damages.
( 4 ) THE case of the plaintiffs in nutshell is as under :
( 5 ) PLAINTIFF no. 1 is a registered partnership firm of which plaintiff no. 2 is a partner. Said firm is engaged in business of manufacturing; marketing and selling pouched "dhana ni Dal" and other mouth refreshing products in India. Defendant no. 3 purports to be a sole proprietary concern of which defendants no. 2 and 4 are the sole proprietors. As per the averments made in paragraph 2 of the plaint, the aforesaid firm has recently started business of manufacturing and selling "dhana ni Dal" in pouches. The predecessor of plaintiff no. 2, i. e. , grandfather of plaintiff no. 2, one somabhai Ishwarbhai Patel had started said business in the year 1940 in Gujarat. Late somabhai Bhagat had four sons, namely, natwarlal S. Bhagat, Premanand S. Bhagat, navin S. Bhagat and Dahyabhai S. Bhagat. Somewhere in the year 1963, Shri navinbhai Bhagat, whose son is defendant no. 2, had retired from the family business.
( 6 ) IN the year 1990, three brothers, other than Navinbhai S. Bhagat along with their sons established plaintiff no. 1 firm in which "dhana ni Dal" was packed in sachet pouches and sold in commonly well known trademark, trade name "bhagat". The partners of plaintiff no. 1 firm applied for registration of trade mark 536230 and 668188 in Class 30 on 31st August, 1990 and 5th june, 1995 respectively and said trademarks are applied to the goods being sold by plaintiff no. l firm. The plaintiffs have also applied for other trade marks as associated marks. In paragraph 5 of the plaint, the plaintiffs have given a chart regarding total sales of various products of plaintiff no. 1 from 1991-1992 onwards. It is averred in the plaint that the name/word "bhagat" and the trade marks have acquired distinctiveness in relation to the products of plaintiff no. 1. It is also averred in the plaint that over the years, the plaintiffs have attained tremendous goodwill and reputation in relation to the products manufactured by them. It is also the case of the plaintiffs that the products of plaintiff no. 1 are considered to be of the highest quality which has led to progressive growth in the business of plaintiff no. 1. In paragraph 6 of the plaint, the plaintiffs have produced a chart of adve
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