J U D G M E N T

% 22.12.2023 I.A. 14686/2021 (under Order XXXIX Rules 1 and 2 of the CPC)

& I.A. 16119/2021 (under Order XXXIX Rule 4 of the CPC)

1. The plaintiff is the proprietor of the trademark CHAKRA, registered as a word mark in Class 291 in respect of ―edible oils for sale in the States of Uttar Pradesh, Uttaranchal and Uttarakhand2‖ w.e.f. 28 June 2013. It is also the proprietor of the following three copyright registrations for artistic works, in each case titled CHAKRA:

1 of the NICE classification applicable for registration of trade marks

2 Why the certificate mentions both Uttaranchal and Uttarakhand remains a mystery

2. The plaintiff claims that its predecessor-in-interest, B.L. Agro Oils Ltd, had adopted the trademark CHAKRA on 1 April 1997. The unique label, and the manner in which the mark was depicted thereon, were also adopted on the same day. Since then, it is asserted that B.L. Agro Oils and, thereafter, the plaintiff, have been continuously using the mark CHAKRA and the labels, in respect of which the plaintiff has registered copyright, for packing and selling edible oils of different kinds, such as mustard oil, Kohlu mustard oil, agmark mustard oil, soya refined oil, refined oil, vegetable refined oil, and the like. In each case, the sale was under the mark CHAKRA. The mark CHAKRA was assigned to the plaintiff by B.L. Agro Oil Co. on 2 December 2008.

3. To vouchsafe its reach and reputation in the market, the plaint provides the figures or sales returns of the plaintiff by use of the mark CHAKRA, and the labels in respect of which it has copyright registration. During the years 2019-20 and 2020-21, the sales of the plaintiff, of the said products, exceed ₹ 1266 crores and ₹ 1609 crores respectively. The plaintiff also claims to have expended considerable amounts towards advertising and promotion of its marks, with the amount spent in 2020-2021 alone being in excess of ₹ 24 lakhs.

4. Mr. Gagan Gupta, learned Counsel for the plaintiff, submits that, as the proprietor of the registered trademark CHAKRA, the plaintiff has, by virtue of Section 28(1)3 of the Trade Marks Act, 1999, the right to exclusivity in respect of the said trademark, and to protect it against infringement. By virtue of Section 27(2)4 of the Trade Marks Act, the continuous use of the trademark CHAKRA and of the labels in respect of which the plaintiff has copyright registration also confers, on the plaintiff, the right to protect itself against any attempt, by others, to pass off their products as those of the plaintiff. Mr.

3 28. Rights conferred by registration. –

(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

4 (2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in

respect thereof.

Gupta submits that, by dint of continuous use, the mark CHAKRA, especially when represented in the unique manner in which it figures on the plaintiff’s label, is indelibly associated with the plaintiff’s edible oils, of which it has emerged as a source identifier.

5. On 27 May 2021, the defendant applied for registration of the word mark CHAKRA KOLHU in Class 29 for ―mustard oil, refined rice bran oil, refined soybean oil; processed oils for food‖. The plaintiff filed a Notice of Opposition dated 12 July 2021. The defendant’s application is currently ―opposed‖.

6. Despite the above opp