The judgment underscores that trademark registration alone does not guarantee protection without actual use, and that delay in action does not preclude injunction if infringement is proven.

JUDGMENT :

(Sunita Agarwal, CJ.) :

1. The instant appeal under Order 43 Rule 1 (r) of the Code of Civil Procedure, 1908 read with Section 13 of the Commercial Courts Act, 2015 has been preferred against the judgment and order dated 11.08.2023 passed by the Additional District Judge, Commercial Court Judge, Morbi on an interim injunction application Exhibit 5 in a suit for infringement of the trade mark and passing off as also for rendition of accounts and damages. The relief claimed in the suit are for perpetual injunction restraining the defendants through their proprietor, partners, servants, agents, etc. all persons associated or connected with the business of the defendants from adopting and/or using the impugned marks “Rose” and/ or “Rose”/ “Gulab” in any manner or from adopting or using any marks identically or deceptively similar to the registered trade mark “Gulab”, which is a prior used trade mark of the plaintiffs in respect of business of their groundnut oils, edible oils and cooking oils of whatsoever nature. On the plea of commission of the acts of passing off by the defendants, permanent injunction has been sought.

2. During the pendency of the suit, Exhibit 5 interim injunction application has been preferred praying for restraining the defendants from using the trade mark, identically and deceptively similar to the registered trade mark of the plaintiffs “Rose” with device, which was alleged to be deceptively similar to the plaintiffs’ mark “Gulab” with device.

3. The Trial Court referring to the provisions contained in Section 29 of the Trade Marks Act, the Legal Use Certificate issued by the Trade Mark Registry brought on record by the Plaintiffs, has recorded an opinion that the mark of the plaintiffs are registered in all the respective Classes, i.e. Classes 29 and 31 since 13.09.1988 as well as different years, months and dates and their registration is valid till date. The user date of the mark “Gulab” with device of the plaintiffs is claimed from 1985. As per Section 31 of the Trade Marks Act, 1999, registration is prima facie evidence of its validity. The plaintiffs are, thus, proved to be registered user and proprietor of the mark “Gulab” with device under Classes 29 and 31. The protection under the Trade Marks Act under Sections 28 and 29 are, thus, available to the plaintiffs. There is an exhaustive discussion on the meaning of two phrases “identical” or “deceptively similar” and the primary test is as to how it would be decided as to whether the impugned trade mark is identical or similar to the registered trade mark. Further, on comparison of the impugned trade mark with the registered trade mark of the plaintiffs, it was opined that the impugned trade mark of the defendants is a replica/ditto imitation of the plaintiffs’ trade mark.

4. It was further observed that the defendants have made no attempt to coin their mark and they have picked up the mark of the plaintiffs and, thereafter, by making minor changes, adopted the mark of the plaintiffs as a whole. It was further pointed out that the mark of the defendants was conceptually, structurally and phonetically identical with plaintiffs’ mark “Gulab” and all prominent features of the plaintiffs’ mark are included and expressed in the defendants’ mark. Minor similarities in the mark of the defendants are trivial and it cannot be said to be distinct, structurally, conceptually or visually. After arriving at the conclusion that the impugned mark “Rose” with the device of the defendants is identical and deceptively similar to the plaintiffs’ mark “Gulab” with device. The Trial Court has proceeded to examine as to whether the goods and services in relation to which the defendants use the mark are identical or similar to the goods or services in relation to which the plaintiffs use its registered trade mark. It was opined that the plaintiffs got a Legal Use Certificate of the registered trade mark under Classes 29 and 31, which shows that the mark is used