Back
2023 Supreme(Online)(DEL) 11183
DELHI HIGH COURT
KHADI AND VILLAGE INDUSTRIES COMMISSION – Appellant
Versus
GIRDHAR INDUSTRIES AND ANR. – Respondent
CS(COMM)-130_2022
Plaintiff seeking interim injunction must establish prima facie case of infringement/passing off by proving prior use and reputation in asserted mark before defendant's adoption of rival mark.
Headnote:
TRADEMARK - INFRINGEMENT - PASSING OFF - KHADI
Fact of the Case:
The plaintiff Khadi and Village Industries Commission (KVIC) seeks relief against infringement and passing off of its registered trademarks KHADI by the defendant. KVIC alleges that the defendant is using the mark KHADI alone or as part of its registered mark GIRDHAR KHADI for soaps and detergents, in violation of KVIC's rights.
Finding of the Court:
The court finds that KVIC has not been able to make out a prima facie case of infringement or passing off against the defendant. KVIC has not proved prior use and reputation of the KHADI mark for soaps before the defendant started using its registered mark GIRDHAR KHADI.
Issues: Whether KVIC is entitled to interim injunction against use of GIRDHAR KHADI and BR KHADI marks by the defendant pending suit disposal.
Ratio Decidendi: For interim injunction, plaintiff must show prima facie case of infringement/passing off. KVIC failed to prove prior use and reputation of KHADI mark for soaps before defendant's use of GIRDHAR KHADI mark.
Final Decision: Court dismisses KVIC's application for interim injunction against use of GIRDHAR KHADI and BR KHADI marks by defendant.
CS(COMM) 130/2022
Page 1 of 54
$~
*
IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 2 February 2023
Pronounced on: 28 December 2023
+
CS(COMM) 130/2022
KHADI AND VILLAGE INDUSTRIES
COMMISSION
..... Plaintiff
Through:
Ms. Shwetasree Majumder, Ms.
Diva Arora, Ms. Devyani Nath and Ms.
Archita Nigam, Advs.
versus
GIRDHAR INDUSTRIES AND ANR.
..... Defendants
Through:
Mr. Shrawan Bansal and Mr.
Kankaran Singh, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
J U D G M E N T
%
28.12.2023
IA 3114/2022 (under Order XXXIX Rules 1 and 2 of CPC)
1.
The plaintiff Khadi and Village Industries Commission (KVIC)
seeks, by this suit, relief against what it perceives to be infringement,
by the defendant, of its registered trademarks and passing off, by the
defendant, of its products as the products of the plaintiff.
2.
This judgment decides IA 3114/2022, filed by the plaintiff
under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure,
1908 (CPC), seeking interlocutory injunctive reliefs pending disposal
of the suit.
Digitally Signed By:AJIT
KUMAR
Signing Date:30.12.2023
13:53:49
Signature Not Verified
CS(COMM) 130/2022
Page 2 of 54
3.
I have heard learned Counsel for both sides at length.
Ms.
Shwetasree Majumder appears on behalf of the plaintiff and Mr. S.K.
Bansal represents the defendant.
Rival submissions
Case set up by the plaintiff – Submissions of Ms. Majumder
4.
The plaintiff is a creature of the Khadi and Village Industries
Commission Act, 1956 (“the KVIC Act”).
The KVIC was itself
constituted in 1957. Since then, it has been carrying out work relating
to implementation of programs for the development of Khadi and
other related industries in rural areas. In the process, products bearing
the trademark “Khadi” are promoted by the plaintiff.
The plaintiff
also implements the Prime Minister’s Employment Generation
Program (PMEGP) for upliftment and improvement of artisans,
weavers and other members of small scale village and rural industries.
5.
The plaintiff adopted the trademark KHADI, which is also part
of its corporate name, on 25 September 1956. Since then, the plaintiff
has been using the trademark KHADI in a variety of classes and for a
variety of goods and services continuously and without interruption.
Under the Trade marks Act, 1999, the plaintiff has registrations of
(i)
the word mark KHADI,
(a)
with effect from 27 November 2014, in Classes 1,
2, 3, 4, 5, 6, 7, 8, 14, 16, 18, 19, 20, 21, 23, 24, 25, 26,
Digitally Signed By:AJIT
KUMAR
Signing Date:30.12.2023
13:53:49
Signature Not Verified
CS(COMM) 130/2022
Page 3 of 54
27, 29, 30, 32, 34, 35, 38 and 42 of the NICE
classification of marks, applicable to registration of trade
marks in India, claiming user from 25 September 1956,
and
(b)
with effect from 28 November 2014 in Class 22,
claiming user from 4 October 2014,
(ii)
the device mark
, with effect from 19 June 2018
in Classes 1, 2, 3, 4, 5, 6, 7, 8, 14, 16, 18, 19, 20, 21, 22, 23, 24,
25, 26, 27, 29, 20, 32, 34, 35, 38 and 42, claiming user from 25
September 1956, and
(iii)
the device mark
(a)
with effect from 2 December 2014 in Classes 1, 2,
3, 4, 5, 6, 7, 8, 14, 16, 18, 19, 20, 21, 22, 23, 24, 25, 26,
27, 29, 30, 32, 34, 35, 38 and 42, claiming user from 31
May 2000, and
(b)
with effect from 31 March 2020,
(i)
in Classes 12, 13, 17, 28, 31 and 37 claiming
user from 25 September 1956, and
(ii)
in Class 33 on “proposed to be used” basis.
6.
The plaintiff also hosts the websites www.kviconline.gov.in,
www.khadiindia.gov.in and www.ekhadiindia.com .
It also operates
on several social media platforms.
The plaintiff also provides a
mobile application by the name “Khadi India”, which helps customers,
Digitally Signed By:AJIT
KUMAR
Signing Date:30.12.2023
13:53:49
Signature Not Verified
CS(COMM) 130/2022
Page 4 of 54
patrons and members of the trade to locate the nearest Khadi India
store.
7.
The mark KHADI has, therefore, according to the plaintiff,
become indelibly associated with the plaintiff, by dint of continuous
and
