ROSHAN LAL OIL MILLS LTD Vs. SHAKTI INDUSTRIES AHMEDGARH PUNJAB
LAWS(DLH)-1995-5-18
HIGH COURT OF DELHI
Decided on May 25,1995

ROSHAN LAL OIL MILLS LTD., NEW DELHI Appellant
VERSUS
SHAKTI INDUSTRIES, AHMEDGARH, PUNJAB Respondents


Referred Judgements :-

MESSERS DEVIDOSS AND CO. V. ALATHUR ABBOYEE CHETTY AND CO. [REFERRED TO]
M/S. JUGMUG ELECTRIC AND RADIO CO. V. M/S. TELERAD PVT. LTD.,BOM AND ANOTHER [REFERRED TO]
L D MALHOTRA INDUSTRIES VS. ROPI INDUSTRIES [REFERRED TO]
CENTURY TRADERS VS. ROSHANLAL DUGGAR AND COMPANY [REFERRED TO]
DAIMLER BENZ AKTI VS. HYDO HINDUSTAN [REFERRED TO]
WESTON ELECTRONICS LIMITED VS. RAJESH AND COMPANY [REFERRED TO]
SUNDER PARMANAND LALWANI VS. CALTEX INDIA LTD [REFERRED TO]


JUDGEMENT

N.G.Nandi - (1.)IN this suit the plaintiff is seeking to restrain the defendant from manufacturing, selling, offering for sale, advertising or displaying directly or indirectly dealing in edible oils including Mustard oil, oil cakes and other allied and cognate goods under the trade mark 'TAJ MAHAL label', or any other trade mark identical with or deceptively similar to the plaintiff trade mark TAJ MAHAL label pending the hearing and disposal of the suit.
(2.)THE case set out is that the plaintiff is the proprietor from 17.1.1983 of the registered trade mark 'TAJ MAHAL label' in respect of edible oil and oils, Mustard oil in class 29 for sale in the States of Punjab, Jammu and Kashmir, Himachal Pradesh, Bihar, Orissa and West Bengal. That the defendants is engaged in the business of manufacturing oil cakes and is selling the same under the trade mark 'TAJ MAHAL label' and that the defendant is not the proprietor of the said trade mark yet is selling the goods in Delhi and other parts of the country and creating confusion in the markets and is passing off his goods as that of the plaintiff : that the defendant trademark is identical with and deceptively similar to the plaintiffs trade mark ; that the unwary purchasers are bound to be deceived in purchasing the defendants goods under the impression that it is emanating from the plaintiff's source. As against this, the defence is that the trade mark 'TAJ MAHAL' which is subject matter of the dispute actually belongs to M/s. Shree Mahavir Oil and General Mills, Ahmedgarh, which is sister concern of the defendant, which is using it extensively and continuously since the year 1970 as the trade mark 'TAJ MAHAL' was conceived and adopted by M/s. Shree Mahavir Oil and General Mills for mustard oil cakes much prior to the alleged adoption by the plaintiff and thus the said trade mark does not belong to the plaintiffs that the plaintiff is estopped from restraining the defendant from using the trade mark TAJ MAHAL for its product i.e. oil cake in as much as it is within the knowledge of the plaintiff that the defendant has been using the trade mark 'Taj Mahal Khal' in respect of oil cakes for the last 13 years i.e. from 1.1.1980 through main sales depots/agency M/s. Madan Gopal and Sons at Bhatinda : that the defendant's trade mark 'Taj Mahal Khal', used for oil cakes has acquired tremendous reputation by virtue of its quality, publicity through various media and enormous net work of sale through out Punjab and Haryana ; that the plaintiff's acquiescence and waiver are established beyond the shadow of any doubt ; that the plaintiff's product i.e. edible oil falls in class 29 whereas defendant's product i.e. oil cakes falls within Class 31 of the Fourth Schedule of Trade and Merchandise Marks Act. That there is no passing off by the defendant ; that the edible oil is meant for human consumption while oil cakes are meant for cattles, thus oil cakes cannot be passed oil for the edible oil as the class of customers is altogether different. It is denied that the plaintiff is the prior user of the trade mark TAJ MAHAL ; that the defendant has been permitted to use and adopt the said trade mark by Shree Mahavir Oil and General Mills for its product oil cakes. In substance, the defendant denied the averments in the plaint and prays for the vacation of the ex parte ad interim injunction and the consequent disposal of the injunction application.
As seen above, the plaintiff has been alleging the prior user of the trade mark TAJ MAHAL i.e. since 1977 for its product of edible oil whereas according to the defendant the trade mark TAJ MAHAL was conceived by M/s. Shree Mahavir Oil and General Mills which is sister concern of the defendant since 1970 who have allowed the defendant to use the said trade mark and the defendant has adopted and has been using the trade mark 'Taj Mahal Khal' for its product oil cakes for the last 13 years.

There is no dispute that both the plaintiff and the defendant have been using the trade mark 'TAJ MAHAL' with the picture of famous Taj Mahal at Agra. So far as the prior user of the mark by the plaintiff is concerned, the plaintiff has produced certain sales invoices in its names which began from 22.5.1982.Thus, it can be prima facie gathered from the said sales invoices that the plaintiff is dealing in edible oil under the trade mark 'TAJ MAHAL label' atleast from May, 1982.

The defendant has produced letter dated 2.5.1973 from M/s. Shree Mahavir Oil and General Mills, Ahmedgarh (Punjab) to suggest that the said Mills was established in the year 1988 and the same had been manufacturing mustard oil under the trade mark 'Lal Hathi's and mustard oil cakes under the trade mark 'Taj Mahal Khal' and the said user was from 1972 and 1985 ; that in the year 1985-86 the concern was taken over on lease by M/s. Shakti Industries, Ahmedgarh (defendant) and till date the concern is on lease with M/s. Shakti Industries, Ahmedgarh.

Even taking the above letter at best all that can be prima facie said is that the partnership firm of Shree Mahavir Oil and General Mills, Ahmedgarh (Punjab) was established in the year 1968 and was registered on 7.11.1968 and the said firm was manufacturing mustard oil cakes under the trade mark 'Taj Mahal Khal' upto 1985 and in the year 1985-86 the very concern was taken over on lease by the defendant and till date the concern is on lease with the defendant. It is pertinent to note that the certificate issued on 20.5.1993 does not refer to the defendant having been allowed to adopted or use the trade mark 'Taj Mahal Khal' as alloyed by the defendant. An affidavit has been filed by one Satya Pal S/o Sh. Dharat Lal, partner of M/s. Shree Mahavir Oil and General Mills, Ahmedgarh testifying to the effect that deponent's father along with others was a partner, in the firm of M/s. Mahavir Oil and General Mills, Ahmedgarh ; that the concern was manufacturing mustard oil under trade mark 'Lal Hathi' and mustard oil cakes under trade mark TAJ MAHAL KHAL since 1970 ; that the concern was taken over on lease by M/s. Shakti Industries, Ahmedgarh in 1985-86. The said affidavit has been sworn on 16.9.1993.

As far the user of the trade mark 'Taj Mahal Khal' by M/s. Mahavir Oil and General Mills, the defendant has produced besides the above referred certificate and the affidavit, the bill invoices commencing from 2.4.1982 onwards whereas for showing the use of the mark 'Taj Mahal Khal' the defendant has produced bills in its name commencing from 10.1.1983 at page 25. Defendant's registration of the mark as suggested from page 113 is from 1.1.1980.

It has been submitted on behalf of the plaintiff that the mark cannot be used even for allied purposes and that the plaintiff has a prior user and there is no assignment by Shree Mahavir Oil and General Mills in favour of the defendant, the defendant cannot be said to be the prior user of the mark. In the case of Century Traders v. Roshan Lal Duggar and Co. and others, AIR 1978 Delhi 250, it is held by the Division Bench that 'in any action for passing off in order to succeed in getting an interim injunction the plaintiff has to establish user of the mark prior in point of time than the impugned user by the defendants. The registration of the mark or similar mark prior in point of time to user by the plaintiff is irrelevant in an action for passing off and the mere presence of the mark in the register maintained by the trade mark registry does not prove its user by the persons in whose names the mark is registered and is irrelevant for the purposes of deciding the application for interim injunction unless evidence has been led or is available of user of their registered trade mark".

In the instant case, as pointed out above, the certificate and the affidavit referred to above do not even impliedly refer to any assignment of trade mark 'Taj Mahal Khal' by M/s. Shree Mahavir Oil and General Mills in favour of the defendant. The lease of the said concern according to the certificates is from 1985-86 to the defendant. The registration of the defendant's mark, as pointed out above, is from 1.1.1980. Whereas the invoices produced by the defendant suggesting the user of the mark 'Taj Mahal Khal' is from 10.1.1983, where the plaintiff's user of the mark has been suggested from the sale invoices dated 22.5.1982.

In the case of Smt. Vinnay Chawla v. Mrs Chandamama Toytronix Pvt. Ltd. AIR 1992 Delhi 234, in an action of passing off, the user of impugned trade mark by plaintiff prima facie prior to that of defendant and the goods manufactured by plaintiff assuming vendible character and the invasion by defendant of proprietary right of plaintiff resulting in damages and irreparable injury, the grant of injunction was held justified.

That in both the marks the picture of 'Taj Mahal' is shown to appear. The plaintiff's product is mustard oil whereas defendant's product is oil cakes. According to the defendant the class of customers is different as the mustard oil is meant for cattles and that there is no question of causing any deception or confusion to the customers as the class of customers is difference.

The subject matter of the dispute is the mark 'TAJ MAHAL'. In this regard, the plaintiff relies on the decision reported in the case of M/s. Jugmug Electric and Radio Co. v. M/s. Telerad Pvt. Ltd., Bombay and another AIR 1977 Delhi 152, wherein it is observed that "the respondent who had coined the word, telerad and extensively used it and acquired reputation for his products, was entitled to protect his trade name against its unauthorised use. The use of the expression "Telerad" by the appellant was clearly not bona fide.......The goods which the appellant wished to trade in, were electrical appliances but the trade name they had selected had nothing to do with the electrical appliances. Their obvious intention was to pass off their goods as originating from the respondent's manufacture or at last as of a collaborator of respondent and as such the appellant's use of the trade mark 'TELERAD' was likely to deceive or cause confusion, and therefore, its registration was prohibited by clause (a) of Section 11......". Thus the use of the trade mark 'Telerad', though for different types of goods, viz electrical appliances was held likely to deceive or cause confusion and the registration thereof prohibited. The plaintiff has also relied on the decision in the case of Diamler Benz Aktiedesells Chaft and another v. Hybo Hindustan AIR 1994 Delhi 239, it is held that "the trade mark namely three pointed star in circle/ring and word "Benz" is associated with name of world famous car 'Mercedes Benz' and the defendant using word "Benz" and "Three pointed Human Being in a Ring on undergarments not permissible and defendant restrained by injunction". In an other decision in the case of Weston Electronics Ltd. v. M/s. Rajesh and Co, AIR 1995 Delhi 13, it is held that "the use by the defendant of trade mark similar to one of plaintiff even in respect of manufacturing electrical goods of different kinds than those manufactured by plaintiff is likely to create confusion to the purchasers and that for passing off action goods of the plaintiff and the defendant need not be same."

In the case of Sunder Permanand Lalwani and Others v. Caltex (India) Ltd. AIR 1969 Bombay 24, the Division Bench of the Bombay High Court has observed "that a large number of persons, if they saw or heard about the mark 'Caltex' in connection with the applicant's watches, would be led to think that the watches were in some way connected with the opponents who were dealing in petrol and various oil products with the Caltex mark or they would at least wonder whether they were in any way connected with the opponents. Persons seeing the mark attached to watches which was a new class of goods, would assume, or were most likely to assume, that they originated from the proprietor of the mark, namely the opponents (Caltex) the world famous mark".

(3.)THUS, it would be seen from all the decisions by this Court in a passing off action the goods need not be the same and all what is required to be seen is the user of the trade mark by the defendant though for manufacture of different types of goods whether the mark would carry confusion and deceive to the purchasers taking the goods of the defendant to be that of the plaintiff or plaintiff's association with the goods manufactured by the defendant. In the instant case mark 'Taj Mahal' with the picture of Taj Mahal, in prima facie view would create deception and confusion in the mind of unwary customers that the goods manufactured and sold by the defendant to be that of the plaintiff's or the association of the plaintiff with the goods of the defendant.
It may be appreciated that the purchasers of the oil cakes manufactured and sold by the defendant under the mark 'Taj Mahal Khal', though not for human consumption but for the consumption of buffalows, cows etc. and the purchasers not themselves consuming the same, would be some human agency which has to purchase cattle fees for the cattles. So it cannot be said in my view that the class of customers is different. In all such cases may it be for human consumption or for cattle consumption the customer would be person or the human agency. In other words the class of consumers may be different but not the class of purchasers/customers.

One of the argument is that the present suit has been filed in Delhi after the defendant filed a suit and got injunction from Sangrur Court, Page 117 of the defendant's list is the certified copy of the order dated 11.6.1993 in Suit No. 5/2.6.1993 by the learned Additional District Judge, Sangrur which is the suit filed by the presence defendant against the present plaintiff and two others whereby the injunction granted by Sangrur Court was ordered to continue subject to the order of the Delhi High Court, if passed in Suit No. 124/93 pending before the High Court i.e. this suit. It prima facie appears that the suit before the Sangrur Court, being Suit No. No. 5/2.6.1993, has been filed, soon after the present suit has been filed on 26.5.1993 and some orders were obtained by the defendant against the present plaintiff. It cannot be said that this suit has been filed simply because the defendant had approached the Court of Additional District Judge, Sangrur by Suit No. 5/2.6.1993 as the present suit has been filed on 26.5.1993. In any event I am not concerned with the filing of the suit in Sangrur Court as far as the grant, if any, if injunction in this suit is concerned.

It has been submitted on behalf of the defendant that the plaintiff has acquiesced in filing the present suit and, therefore, not entitled to the relief of injunction since the defendant has acquired popularity of its mark 'Taj Mahal Khal' through publicity/advertisement and has spent considerable amount for getting his mark advertised through media. The defendant has produced the copies of the bills suggesting the advertisement of its mark 'Taj Mahal Khal' through Doordarshan on TV, in the newspapers etc. the bills and vouchers suggest the advertisement of defendant's mark through various media publically and openly from June 1990 in the region of Punjab.

In the case of M/s. L.D. Malhotra Industries v. M/s. Ropi Industries ILR (1976) 1 Delhi 278, it is observed that "a man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. The plaintiff, the possessor of the legal right, must have encouraged the defendant in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal rights" According to the defendant since 1990 he has been asserting and openly advertising his mark and the goods through media over years and spent considerable amounts and that the plaintiff has allowed the defendant to incur all these expenditures and has acquiesced directly and has abstained from asserting his legal rights. In the case of Messers Devidoss and Co. v. Alathur Abboyee Chetty and Co. AIR 1941 Madras 31, it is observed by the Division Bench of the Madras High Court that to support a plea of acquiescence in a trade mark case it must be shown that the plaintiff has stood by for a substantial period and thus encouraged the defendant to expend money in building up a business associated with the mark. Although delay simpliciter is no defence to a suit for infringement of a trade mark but where a trader allows a rival trader to expend money over a considerable period in the building up a business with the aid of a mark similar to his own he will not be allowed to stop his rival's business. In the case before the Madras High Court the plaintiff got its mark (glazine) registered in 1897. In 1900 the defendants commenced to sell similar gods under the name "glazine". In 1905 the plaintiff's commenced an action for infringement and in the light of these facts the Division Bench of the Madras High Court observed as above.

In the case of Moolji Sicca and Co. v. Ramjan Ali, AIR 1930 Calcutta 678 it is held that acquiescence is only a form of an astoppel and it is of the essence of the acquiescence that the party acquiescing should be aware of and by words and conduct should represent that he assents to what is a violation of his rights and that person to whom such representation is made should be ignorant of the other party's right and should have been deluded by the representation into thinking that his wrongful action was assented to by the other party". As far as the present case is concerned all that the defendant's evidence as referred to above suggest is that in order to get trade mark 'Taj Mahal Khal' popularised advertisement through various media have been given and the defendant spent considerable amount from 1990. It is not suggested even prima facie from the evidence on the record that the plaintiff who is alleged to have acquiesced was aware of the defendant getting his mark 'Taj Mahal Khal' popularised by giving advertisement through different media and spending considerable amount for the purpose. It is also not suggested prima facie that the plaintiff was aware of the violation by the defendant of its trade mark TAJ MAHAL lable by using the mark 'Taj Mahal Khal' by the defendant. It need hardly be said that mere delay in taking the action for infringement of the trade mark would be no reason to refuse the relief, if the same could otherwise be granted to the plaintiff on facts and circumstances.

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