Full Text
HIGH COURT OF DELHI
MODERN SNACKS PVT LTD ..... Plaintiff
Through: Mr.S.K.Bansal, Mr.Ajay Amitabh Suman, Advs.
Through: Mr.Chander M. Lall, Sr. Adv. with Ms.Shikha Sachdeva, Ms.Mugdha Palsule, Advs.
MODERN FOOD ENTERPRISES PVT. LTD. ..... Plaintiff
Through: Mr.Chander M. Lall, Sr. Adv. with Ms.Shikha Sachdeva, Ms.Mugdha Palsule, Advs.
Through: Mr.S.K.Bansal, Mr.Ajay Amitabh Suman, Advs.
JUDGMENT
1. These are two cross suits, filed between M/s Modern Food Enterprises Pvt. Ltd. (hereinafter referred to as the ‘plaintiff’) and M/s Modern Snacks Pvt. Ltd. (hereinafter referred to as the ‘defendant’).
2. The defendant has filed CS(COMM) 299/2020 under Section 142 of the Trade Marks Act, 1999 (hereinafter referred to as the ‘Act’) seeking permanent injunction restraining the plaintiff from issuing groundless threats in relation to the use of the trade mark ‘MODERN’, used by the defendant in relation to Namkeens, Snacks, Confectionery, savouries and other allied and related goods.
3. On the other hand, C.S.(COMM.) 460/2020 has been filed by the plaintiff seeking permanent injunction against the defendant from infringing and/or passing off its trade mark ‘MODERN’ and its copyright.
4. As the above applications seeking interim relief arise out of same factual disputes, they were taken up together for hearing and are being disposed of by this common judgment.
5. The plaintiff, in its plaint, states that its predecessor in title, that is, ‘M/s Modern Food Industries India Limited’ was a Public- Sector Undertaking under the control of the Ministry of Agriculture/Ministry of Food Processing Industries and was incorporated in the year 1965. It started commercial production in 1968. On 31.01.2000, the Government of India disinvested 74% of its shareholding in the plaintiff company in favour of Hindustan Lever Limited, thereby becoming a Joint Venture. In 2002, the Government of India disinvested the balance shareholding also in favour of HLL. On 01.04.2016, ‘Everfoods Asia Pvt. Ltd.’ acquired 100% shareholding of the plaintiff from Hindustan Unilever Limited (name of HLL had been changed to HUL in 2014). The trade marks of the plaintiff remained in the name of the plaintiff and were not transferred.
6. The plaintiff states that it is an internationally renowned corporation engaged in the manufacturing of bakery products such as biscuits, cakes, bread, bread crumbs, bread stuffings, buns, cookies, pies, pav, pizza bread and breakfast cereals. It adopted the trade mark ‘MODERN’ in the year 1965 for bread and has been using the same continuously and uninterruptedly since then. It launched a bread with Vitamins fortification in 1968; a sweet bread in Chennai in 1971; India’s first Fruity Bread in 1981; and Wheatamin- India’s first Brown Bread in
1991. The plaintiff further claims that it is a leader in the said category of goods in India.
7. The plaintiff states that the trade mark ‘MODERN’ is a wellrecognised brand that pioneered and created the bread industry in India. It is depicted by the plaintiff in a stylized manner in small letters, only the letter ‘R’ is depicted in capital. A representation of the plaintiff’s trade mark is as under:
8. The plaintiff asserts that in or about 1970, its predecessor-in-title devised a distinctive packaging for its bread under the mark ‘MODERN’, having a blue and orange square shaped pattern on a white coloured background with the trade mark ‘MODERN’ written in Hindi and English language on the packaging in a distinctive manner in the colour white on a rectangular blue coloured background, which has been registered as a copyright in favour of the plaintiff, bearing copyright registration no. A- 9291/73. The same is depicted hereinbelow:
9. The plaintiff claims that sometime in 2010, it introduced a new packaging for its bread, which had a lion cartoon character, the crop device, and trade mark ‘MODERN’ depicted in the colour white on a blue background. The words ‘Family Shakti’ were also written on the label, however, the style of writing ‘MODERN’ remained the same. The logo also had different coloured square blocks on the side, in the colours red and green. The said packaging is depicted hereinbelow:
10. The plaintiff claims that in 2016, it introduced a slight variation in the above packaging, by removing the words ‘Family Shakti’ and a different blue colour was introduced in the label and the colour of the ribbon device below the trade mark ‘MODERN’ was changed. The plaintiff claims that this label has been used consistently and without a break by the plaintiff since then. The logo is reproduced hereinbelow:
11. The plaintiff claims that in 2017, it introduced some variations in the packaging for its bread. The various packaging used by the plaintiff is depicted by the plaintiff, in the plaint, as under: Sr. No. Name of Product Image of Product
1. MODERN ATTA SHAKTI
2. MODERN FRUITY
3. MODERN FAMILY SPECIAL
4. MODERN HI-FIBRE
5. MODERN SANDWICH SUPREME
6. MODERN 100% WHOLE WHEAT
7. MODERN MILK PLUS
8. MODERN MULTIGRAIN
9. MODERN WHOLE WHEAT BASED WITH OATS AND FLAX
10.
MODERN ENRICHED SWEET
11.
MODERN RAGI AND OATS
12.
MODERN OATS AND HONEY
12. The plaintiff claims that it has also, gradually over the years, expanded its portfolio of products to include a large variety of bakery products including rusks, cakes, muffins, Indian breads, pizza base, bar cakes, pies, creamburst, sweet fills, batter mixes etc. The trade mark ‘MODERN’ and the ‘square shaped pattern’ in different colour combinations is used on the entire product range of the plaintiff.
13. The plaintiff is also the registered proprietor of various marks with the word ‘MODERN’, details whereof are given by the plaintiff in paragraph 19 of the plaint.
14. Apart from the aforementioned trademark registrations, the plaintiff has also obtained various copyright registrations, details whereof are given by the plaintiff in paragraph 20 of the plaint.
15. The plaintiff states that it extensively advertises its marks, with its promotional expenses increasing from Rs. 583.51 lakhs in the Financial Year 2016-2017 to Rs.2376.48 Lakhs for the Financial Year 2018-19. The plaintiff states that its sales/net revenue for its products under the mark ‘MODERN’ has increased from Rs. 24482.00 lakhs in the Financial Year 2016-2017 to Rs. 33133.78 Lakhs for the Financial Year 2019-2020.
16. The plaintiff claims that it extensively advertises the trade mark ‘MODERN’ on social media platforms such as Facebook, Instagram, Twitter, and YouTube. The plaintiff further claims that it markets and sells its products under the trade mark ‘MODERN’ on e-commerce websites such as Big Basket and Amazon. The plaintiff has also launched a website under the domain name www.modernfoods.co.in, which provides information about the plaintiff’s products.
17. It is the case of the plaintiff that sometime in the year 2017, it came across applications filed by the defendant, bearing number 3050560 and 3050562, seeking registration of the mark ‘MODERN’ in Class 30, in the Trade Marks Journal bearing number 1810. The plaintiff opposed the above-mentioned applications as well as various other applications for the registration of the mark ‘MODERN’ filed by the defendant.
18. The plaintiff claims that on inquiry, the plaintiff could not find any significant presence of the defendant’s products in the market. The plaintiff claims that it was of the opinion that with the registration applications being opposed, the defendant would not use the impugned trade marks. The plaintiff claims that, however, in September 2020, the plaintiff came across the defendant’s products bearing the mark ‘MODERN’. It thereafter conducted an investigation into the defendant’s activities, which disclosed that the defendant was primarily present in the city of Kanpur in Uttar Pradesh. The investigation also disclosed that the defendant is also selling namkeens under other brands, being ‘MIXONA’ and ‘MATLABI’. The defendant also has a website http://www.modernnamkeen.com. The plaintiff claims that the defendant’s website is an imitation of the plaintiff’s website. It lists out the similarities in paragraph 33 of the plaint.
19. The plaintiff claims that on search of the record of the Trade Marks Registry, it found that the defendant had obtained registrations of various label marks with the word ‘MODERN’. The plaintiff claims to have initiated cancellation proceedings in the year 2020 against the registrations of the defendant bearing numbers 1745147, 2688680, 641088, 1937328 in Class 30. The same are stated to be currently pending adjudication.
20. The plaintiff, vide Notice dated 15.06.2020, requested the defendant to inter alia cease-and-desist from using the mark ‘MODERN’. In response to the Notice, vide the Reply dated 27.06.2020, the defendant refused to comply with the cease-anddesist Notice, claiming that it is an honest adopter and concurrent user of the trade mark ‘MODERN’. Subsequently, the defendant initiated litigation proceedings against the plaintiff, being CS(COMM) 299/2020 seeking directions to the plaintiff restraining it from issuing alleged groundless threats.
21. The plaintiff claims that the adoption and use of the same mark by the defendant amounts to infringement of the trade mark/trade dress, passing off, and unfair competition; it is also an infringement of the plaintiff’s copyright. Case of the defendant
22. On the other hand, it is the case of the defendant that it is engaged in the manufacturing and marketing of wide range of goods including namkeens, snacks, confectionary, savouries and other allied and related goods under the trade mark ‘MODERN’, which was adopted by its predecessors, that is, ‘M/s Modern Namkeen Bhandar’ in the year 1990. The trade mark ‘MODERN’ has been assigned to the defendant vide Deed of Assignment dated 20.10.2008, executed between the defendant and its predecessor.
23. The defendant then expanded the use of the trade mark ‘MODERN’ and the label into various variants/formative marks, such as and claims to have been continuously using the said marks up to the present time.
24. The defendant claims to have also applied for and obtained registrations for a variety of its marks/ labels. The details of the registrations and pending trade mark applications of the defendant are given by the defendant in paragraph 8 of the Written Statement.
25. The defendant has also claimed to have been granted copyright protection under registration nos. A-111288/2014 and A- 111289/2014 for the artistic work of ‘MODERN NAMKEEN’(label).
26. The defendant has also obtained registration of the domain name viz. www.modernnamkeen.com.
27. The defendant has provided its annual sales figures in mark/label ‘MODERN’ in paragraph 13 of the written statement, claiming that the same has increased from Rs. 15,423/- in the year 1991-92 to Rs. 25,48,48,196.16 in the Financial Year 2019-2020.
28. The defendant further claims that it has been extensively advertising its goods bearing the mark/label ‘MODERN’ and has regularly been promoting the same in the form of visual, print and electronic advertisements in various leading newspapers, trade literature, magazines, by word of mouth and over the internet, etc. The defendant further claims that substantial advertising expenses have been incurred by it in promoting its goods in magazines and newspapers.
29. The defendant claims to be marketing its products and goods on websites such as www.indiamart.com, www.amazon.com and www.tradeindia.com, among others.
30. The defendant claims that the defendant’s trade mark/label/trade name/domain name has become distinctive of the defendant’s goods and business, and therefore enjoys tremendous goodwill and reputation. The defendant states that it has also been taking legal action against third parties violating its rights in the trade mark. Details of such legal actions are given by the defendant in paragraph 21 of the written statement.
31. It is also the case of the defendant that the plaintiff had, in fact, known of the existence of the defendant’s mark much prior to 2017, and since the year 2003, when in the Search Report dated 16.06.2003 issued by the Registrar of Trade Mark on plaintiff’s application no. 1196916, the defendant’s trade mark no. 641088 was cited as a conflicting trade mark. Again, in the Search Report dated 17.08.2010 issued by the Registrar of Trade Marks, Mumbai in respect of plaintiff’s trade mark application number 1879362 under Class 30, the trade mark application of the defendant, being application no. 1745147 under the same class, was cited. The plaintiff was, therefore, aware of the existence of the defendant’s mark ‘MODERN’ since 2003/2010, contrary to what is claimed in the Legal Notice dated 15.06.2020 and in the plaint.
32. The defendant further submits that in the reply dated 25.02.2011 to the said Search Report, the plaintiff took a categorical stand that the plaintiff’s trade mark ‘MODERN’ is not identical or deceptively similar to the defendant’s mark. The plaintiff, therefore, is estopped from contending to the contrary.
33. The defendant further states that in its Legal Notice dated 15.06.2020, the plaintiff has misrepresented that it has been using the mark ‘MODERN’ since 1965. The plaintiff applied for registrations of the mark ‘MODERN’ under Class 30 only on 31.12.1993 and on 02.09.1994, on “proposed to be used” basis, under application nos.615264 and 638841 respectively. Subsequently, the Registrar of Trade Marks issued an Objection Letter dated 25.10.1999, in relation to application no. 615264 of the plaintiff, to which the plaintiff filed a Form TM-16, amending the user of the mark to be read as “since the year 18.08.1994”.
34. The defendant claims to be an honest concurrent user, entitled to benefit under Section 33 of the Act. The defendant claims that being the registered proprietor of the marks, it cannot be injuncted from using the same. The defendant has, therefore, filed C.S. (OS) 299/2000 against the plaintiff seeking injunction of what it claims are groundless threats.
SUBMISSIONS OF THE PLAINTIFF
35. Mr.Chander M. Lall, learned senior counsel for the plaintiff, submits that the defendant is liable to be restrained from using the trademark ‘MODERN’ as the plaintiff is the prior adopter of the mark ‘MODERN’ and there is a likelihood of confusion between the product of the plaintiff and the defendant due to the identical trade mark used for cognate and allied goods falling under the same class. The learned senior counsel for the plaintiff submits that the trade mark and trade dress of the plaintiff and that of the defendant are deceptively similar. The similarities are such that an unwary consumer with an imperfect recollection is bound to be confused as to the origin of the said goods. To substantiate his assertion, the learned senior counsel relies upon the following comparative table which shows the plaintiff’s and the defendant’s respective trade mark and packaging:-
36. The learned senior counsel for the plaintiff submits that both the plaintiff’s and the defendant’s products are sold through the same trade channels, at the same counters, and to the same set of consumers. The proximity of the products bearing identical trade mark in the market would lead to confusion in the minds of the consumer. He submits that the similarity of the goods would also cause confusion in the members of the trade. He submits that the goods of the defendant and the goods of the plaintiff are cognate and allied. He submits that the defendant is therefore, in terms of Section 29(2) of the Act, infringing the trade mark of the plaintiff. It is also passing off its goods as that of the plaintiffs. In support, he relies on the judgement of the Supreme Court in Milmet of Oftho Industries & Ors. v. Allergan Inc., (2004) 12 SCC 624.
37. The learned senior counsel for the plaintiff submits that the defendant has dishonestly adopted the mark ‘MODERN’ with the sole intention of misappropriating the said well-known brand and to cause confusion in the minds of the members of trade and the consumers.
38. He submits that even a registered proprietor of the trade mark is liable to be injuncted from using the registered mark in case it is violative of the rights of the prior adopter of the mark. In support, he places reliance on the judgement of this Court in Dabur India Ltd. v. Real Drinks Pvt. Ltd.,2014:DHC:27; and Mother Dairy Fruit and Vegetable Pvt. Ltd. v. Bhushan Oil & Fats Pvt. Ltd.,
39. The learned senior counsel for the plaintiff submits that by virtue of Section 17 of the Act, the defendant cannot claim a right over the word mark ‘MODERN’ as the defendant has acquired registration for label marks. In support, reliance is placed on the judgement of the Supreme Court in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., AIR 1955 SC 558.
40. The learned senior counsel for the plaintiff further submits that the adoption of the trade mark ‘MODERN’ by the defendant is dishonest, as are also the registrations obtained by the defendant. The defendant has also not provided any explanation for the adoption of the same. The alleged adoption and use of the mark by the defendant is subsequent by at least 25 years to the adoption of the mark by the plaintiff, and no benefit of subsequent use can be available to the defendant. He submits that an honest and concurrent use is not a defence to a charge of infringement of trade mark or passing off. He places reliance on KEI Industries Limited v. Raman Kwatra & Anr., 2022:DHC:1886, M/s Power Control Appliances and Ors. v. Sumeet Machines Pvt. Ltd., 1994 SCC (2) 448; and Turning Point Institute Pvt. Ltd. v. M/s Turning Point., 2017:DHC:4419.
41. He submits that the reply/response to the Trade Mark Registry was filed by the lawyers of the plaintiff’s predecessor-in-title, that is, Hindustan Unilever Limited. There was no wilful and deliberate concealment as the plaintiff was not aware of the said Reply. He submits that even otherwise, the same cannot act as an estoppel against the plaintiff. He submits that the said Reply was extremely generic in nature and dealt with all the cited marks with the same submission. He submits that a cyclostyled response to the Examination Report cannot be the basis for deciding valuable legal rights. In this regard, he cites Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. & Ors., 2019 (79) PTC 99 (Del); Anil Verma v. R.K. Jewellers SK Group & Ors., 2019 (78) PTC 476; and Preetendra Singh Aulakh v. Green Light Foods Pvt. Ltd., 2023 SCC OnLine Del
2492.
42. Placing reliance on the judgement in M/s Hindustan Pencils Pvt. Ltd. v. M/s India Stationery Products Co. & Anr., (1989) 9 PTC
61 Del; Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd. & Ors.,(supra); and Midas Hygiene Industries (P) Ltd. and Anr v. Sudhir Bhatia and Ors, (2004) 3 SCC 90, the learned counsel for the plaintiff submits that there may be a delay in challenging the use of the impugned trademark, however, it does not disentitle the grant of an injunction.
43. The learned senior counsel for the plaintiff submits that the defendant’s lack of bona fide is further established by the fact that the defendant has never taken any action whatsoever against the plaintiff. On the other hand, the plaintiff has initiated opposition proceedings against the defendant since 2017 and cancellations proceedings in 2020. He places reliance on the judgement in Turning Point Institute Pvt. Ltd. v. M/s Turning Point, (supra).
SUBMISSIONS OF THE DEFENDANT
44. Mr. Bansal, the learned counsel appearing for the defendant, submits that the interim relief sought by the plaintiff is liable to be denied as no prima facie case has been established by the plaintiff in its favour. He has canvassed five main points to support his assertion; i. the goods of the plaintiff and the defendant are not similar in nature and cannot be called as cognate and allied; ii. the mark ‘MODERN’ forms part of the defendant’s trading style and, therefore, cannot be injuncted. He places reliance on London Rubber Co. Ltd. v. Durex Products Incorporated & Anr., AIR 1963 SC 1882; iii. the defendant is an honest and concurrent user of the mark ‘MODERN’; iv. the plaintiff has itself made an admission to the effect that the defendant’s mark is neither identical nor deceptively similar to the plaintiff’s mark; v. the plaintiff is not the prior user of the mark ‘MODERN’ and the plaintiff has made material misrepresentation.
45. The learned counsel for the defendant submits that the products of the defendant and the plaintiff are not cognate or allied in nature. The plaintiff is using the mark for bread and other bakery products, whereas, the defendant is using the impugned mark for namkeen, snacks, savouries and other allied and related products.
46. The learned counsel for the defendant submits that the defendant has independent rights in the trademark/label/copyright in ‘MODERN’ in relation to its goods, i.e., namkeens, snacks, savouries and other allied and related goods.
47. He submits that the defendant cannot be stopped from using its trade mark in relation to its goods as the defendant is the honest adopter and concurrent user of the trade mark ‘MODERN’ in relation to the said goods. In this regard, the learned counsel for the defendant places reliance on the judgements in Hindustan Pencils Pvt. Ltd. & Anr. v. M/s Universal Trading Company, 2000 PTC 561 (DB); S. Narendera Kumar & Co. v. Everest Beverages and Food Industries, 2008 (37) PTC 497; and Britannia Industries Ltd. v. Cremica Agro Foods Ltd., (2008) 38 PTC 89.
48. The learned counsel for the defendant, relying upon the judgments in M/s Johnson and Johnson & Anr. v. Christine Hoden India Pvt. Ltd., AIR 1988 Del 249; and Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, AIR 1965 SC 980, submits that even a claim of passing off is not maintainable because the labels of the plaintiff and the defendant are different and the added material in the same are capable of distinguishing them from one and the other.
49. He further submits that the plaintiff has no exclusive right for the mark ‘MODERN’ even in relation to breads and bakery products. He places reliance on the judgement in Modern Food Industries (I) Ltd. v. Modern Bakery & Ors., (2007) 34 PTC 504, wherein the same plaintiff was denied injunction against ‘Modern Bakery’ which was held to be the prior user of the mark ‘MODERN’.
50. The learned counsel for the defendant also submits that the plaintiff had filed an application for registration of the impugned trademark ‘MODERN’ under application No. 1879362 in Class
30. In the Examination Report dated 17.08.2010 issued by the Registry, the defendant’s mark ‘MODERN’ was cited under No.1745147 in Class 30. In the Reply dated 25.02.2011 to the said Examination Report, the plaintiff has stated that the trademarks cited in the report are not identical or deceptively similar and that there is no likelihood of confusion or deception. The learned counsel for the defendant submits that the plaintiff is now estopped from contending to the contrary. In support, he places reliance on the judgments in the Raman Kwatra & Anr. v. KEI Industries Ltd, 2023/DHC/000083; Under Armour, Inc. v. Aditya Birla Fashion & Retail Ltd, 2023:DHC:2711; SK Sachdeva & Anr. v. Shri EducareLtd. & Anr., 2016 SCC OnLine Del 473; Om Logistics Ltd. v. Mahendra Pandey, 2022 SCC OnLine Del 757; Peps Industries Pvt. Ltd. v. Kurlon Ltd., 2022 SCC OnLine Del 3275; and Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr., (2018) 75 PTC (Del.) 8.
51. The learned counsel for the defendant further submits that the plaintiff has deliberately suppressed the reply/response dated 25.02.2011 to the Examination Report, where the defendant’s mark was cited, as well as the Examination Report dated 16.06.2003 and 17.08.2010. He submits that as the plaintiff has not approached the Court with clean hands, it is not entitled to any relief. In support of his submission, the learned counsel relies on the judgements in Shri Ram Education Truest v. SRF Foundation & Ors, 2016 SCC OnLine Del 472; and Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinod bhai Jadvani & Anr., 2022:DHC:4255-DB.
52. The learned counsel for the defendant submits that the plaintiff wrongly misrepresented in the Legal Notice for cease-and-desist that the plaintiff has been using the impugned trade mark since the year 1965. The true representation of the mark ‘MODERN’, which has been reproduced in the Legal Notice at Page No.3, was applied for registration under No. 615264 in Class 30 only on 31.12.1993 on ‘proposed to be used’ basis. He submits that in the trade mark application under No. 638841 in Class 30 filed by the plaintiff on 02.09.1994, the mark was again applied for by the plaintiff on a “proposed to be used” basis. However, in response to the Objection Letter dated 25.10.1999 issued by the Trade Mark Registry, the plaintiff filed request in the Form TM-16, amending the user of the mark to be read as “since the year 18.08.1994”. The plaintiff suppressed the factum of this amendment. Moreover, in view of the said document of the plaintiff itself, it is estopped from claiming user in the mark ‘MODERN’ in relation to bread prior to 18.08.1994.
53. The learned counsel for the defendant submits that the plaintiff has failed to file any substantial evidence or document prior to the year 1990 to establish the reputation of the mark ‘MODERN’. He submits that the sales figures and the advertisement expenses furnished by the plaintiff are only from the year 2016 onwards. In support, reliance is placed on the judgement in Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. & Ors., (2018) 2 SCC 1.
54. He claims that the defendant is also entitled to protection under Section 33 of the Act. The plaintiff is guilty of delay and acquiescence and interim relief should not be granted. The learned counsel submits that the balance of convenience lies in its favour and if an interim injunction is granted against the defendant at this stage, irreparable injury would be caused to the defendant.
ANALYSIS AND FINDINGS:
55. I have considered the submissions made by the learned counsels for the parties. Plaintiff is the proprietor of the Mark ‘MODERN’
56. As is evident from the above narration of facts and submissions, the dispute between the parties is on the use of the mark ‘MODERN’ by the defendant. The plaintiff claims to be the proprietor of the said mark, not only because of its use since the year 1968, but also on account of the plaintiff holding registration in various trade marks with the word ‘MODERN’ being part thereof. The defendant disputes the user of the said mark as claimed by the plaintiff. The learned counsel for the defendant has asserted that, in the plaint, the plaintiff has given the sales figures only from April, 2016. He submits that there is no material on record which would show the user of the mark earlier than that of the defendant. On the other hand, the learned senior counsel for the plaintiff has placed reliance on various newspaper articles which, at least prima facie establish that the plaintiff has been extensively using the mark ‘MODERN’ in its earlier avatar, being a Public-Sector Undertaking, and had acquired tremendous reputation in the said mark. I, therefore, find no merit in the submission of the learned counsel for the defendant on this account. In my prima facie opinion, the plaintiff has placed on record sufficient documentary proof in support of its claim of being the proprietor of the mark ‘MODERN’.
57. The reliance of the learned counsel for the defendant on the user claimed by the plaintiff in its application no. 638841 in Class 30 as 18.08.1994, to contend that this disproves the claim of the plaintiff of having used the subject mark since 1965, cannot be accepted. Application 638841 appears to be for a device mark. The plaintiff on the other hand has asserted that its word mark registration in ‘MODERN’ dates back to 11.10.1985. It is also claimed that it has been using the said mark as a predominant part of various device marks since 1968. Whether the goods of the plaintiff and the defendant are similar, cogent and allied
58. The plea of the defendant that the goods of the plaintiff, being bread and similar bakery products, are different from the goods of the defendant, being namkeen, snacks, savouries, etc., and there is no likelihood of any confusion by the use of the same mark by the parties, is also without merit. The goods of the plaintiff and the defendant are general consumable food items that are available in the same stores. They can easily be confused as an extension of each other and would fall within the category of being allied and cognate goods. In fact, they are bought by general public and are available in general confectionary/kirana shops. For their costs, the consumer would not pay much attention to the minute differences in packaging (that were highlighted by the learned counsel for the defendant). The consumer would be deceived into believing that the goods of the defendant are that of the plaintiff, being a natural expansion of its range of products. Such consumer is likely to perceive a connection between the two goods and of its origin.
59. Section 29(2) of the Act states that the use of a mark identical to the one registered for similar goods, where such use is likely to cause confusion on the part of the public or likely to have an association with the registered trade mark, also amounts to infringement of the mark. Therefore, for an action of infringement, the plaintiff need not show that the goods of the defendant are identical to that of the plaintiff; they need only be similar. Similarity of goods would have to be considered keeping in view various parameters, like the supply chain, class of consumers of the goods, the general business model in relation to the goods, etc. Keeping in view the above parameters, the goods of the plaintiff and the defendant cannot be said to be so dissimilar so as to rule out any possibility of confusion being caused to the ordinary unwary consumer. Added Material to the Label
60. The learned counsel for the defendant has also submitted that the added material in the label is sufficient to dispel any chance of confusion. I am unable to agree with this submission. The primary mark used by the parties is ‘MODERN’. The goods would be bought and sold under this trade mark. The differences pointed out by the defendant are so minor and inconsequential and cannot be held sufficient to dispel the chance of confusion and deception. Honest Concurrent User and Delay
61. The primary defence of the defendant is its claim of being an honest concurrent user of the mark ‘MODERN’. The defendant claims that it, through its predecessor in title, has been using the said mark since the year 1990, and has also obtained various registrations in the said mark. It was also claimed that the plaintiff knew of the defendant since the year 2003, when the defendant’s mark was cited in the Examination Report dated 16.06.2003, and thereafter in another Examination Report on 17.08.2010; in spite of the knowledge, the plaintiff took no steps against the defendant till the filing of the present suit.
62. Prima Facie, I do not find merit in the submission of the defendant. From the pleadings of the defendant itself, it appears that in the initial stages and till around 2008, when the present defendant took over the mark from its predecessor, the sales of the defendant were minor, and, therefore, the plaintiff can be excused for not knowing the presence of the defendant or its usage of the mark or not considering worth its while to challenge such registrations. It is settled position in law that mere registration of the mark is no evidence of its user (Refer: Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142). The plaintiff is also under no legal obligation to take immediate action against every infringer of the trade mark, howsoever small it may be. The plaintiff is entitled to choose its battles, after all litigation is an expensive and time consuming exercise. The plaintiff, in fact, filed oppositions against applications filed by the defendant, bearing No.3050560 and 3050562 in Class 30) seeking registration of its mark, when they were advertised in the year 2017. The plaintiff, in the plaint, claims that it became aware of the use of the mark by the defendant only in the year 2020 and immediately thereafter issued the cease-and-desist notice to the defendant. It cannot therefore, be said that there is any inordinate delay in filing of the present Suit.
63. In M/s Hindustan Pencils Pvt. Ltd. (supra), the Court held that where there is an honest concurrent user by the defendant, then an inordinate delay or latches may defeat the claim of damages or rendition of accounts but the injunction may not be refused. The interest of the general public has to be kept in mind. Where, however, from the conduct of the plaintiff, acquiescence in the use of the defendant can be inferred, it may offer a good defence to the defendant.
64. In S. Narendera Kumar & Co. (supra), the Court reiterated that in a case of infringement mere delay may not come in the way of the plaintiff seeking its remedy against the infringement of its mark.
65. In Power Control Appliances (supra), the Supreme Court held that plea of honest and concurrent user is not a valid defence to a claim of infringement of the trade mark. It was held that acquiescence is sitting by when another is invading the rights and spending money on it. It implies positive acts; not merely silence or inaction such as involved in latches. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant.
66. Having said the above, it is also relevant to note that the defendant itself is a registered proprietor of various trade marks, such registrations have withstood the passage of time since 1994. They have been challenged by the plaintiff only in the year 2019. In terms of Section 28 of the Act, the registered proprietor is entitled to its exclusive use. Though, it is also well settled law that even a registered proprietor of the mark can be restrained from using the mark by a proprietor of the said mark, such registration must weigh with the court in determining the balance of convenience and relative prima facie case of the parties.
67. Further, in terms of Section 33 of the Act, acquiescence for a continuous period of five years in the use of a registered trade mark being aware of that use, can act as a defence against the challenge of such registration, unless it is shown that such registration was not applied by the defendant in ‘GOOD FAITH’. “Good Faith” is a question of fact to be determined by this Court on the evidence being led by the defendant.
68. In the present case and for the present, what is evident is that the defendant claims to have been using the subject mark since 1990; and the plaintiff being aware of the use of the mark by the defendant at least since 2003, did not initiate any action against the defendant till the filing of the present suit. Though this delay cannot act as a defence to a claim of infringement of trade mark, at the same time, it shall have an important impact in determining the lie of the balance of convenience and irreparable harm, two of the three parameters to judge a claim of interim injunction. In Toyota Jidosha Kabushiki Kaisha(supra), the Supreme Court held that delay in filing of the Suit cannot be allowed to work to the prejudice of the defendant who had kept on using its registered mark to market its goods during the inordinately long period of silence maintained by the plaintiff.
69. What is also relevant is that the plaintiff, in the Reply to the Examination Report dated 17.08.2010, had stated as under: “We refer to the Examination Report No. TMR/MUMBAI/EXM/2010 dated 17th August, 2010 in the above matter. With reference to paragraph 1, we submit that the trademark “MODERN” is not identical or deceptively similar to the cited marks except for registration Nos. 444239 in the name of Modern Food Industries India Limited, New Delhi. The registered proprietor for the above registration is associated with the Applicants and, therefore, there will not be any deception or confusion occurring to the public in the course of trade as the origin of goods is that of the Applicants only. In the circumstances, the registered proprietor will be giving its consent for registration of this mark and, therefore, the mark could be registered under Section 12 of the Trade Marks Act, 1999. Moreover, there are several registered trade marks in which the word “MODERN” is used in conjunction with the other words or as a part of a label mark which will be observed from the Examination Report as cited marks. In view of the above, we respectfully submit that the objections raised may kindly be waived, the Application accepted and proceed for advertisement in the Trade Marks Journal at the earliest. In the circumstances, the Application may be allowed to proceed for registration. In the alternative, kindly fix a hearing of the Application to consider the registration of the mark.” (Emphasis supplied)
70. One of the marks cited in the Examination Report was that of the defendant.
71. In Raman Kwatra & Anr (supra), a Division Bench of this Court has held that a person cannot be permitted to approbate and reprobate; a party making a contrary assertion is not entitled to any equitable relief.
72. The plaintiff cannot disown the above reply contending that it was given by its predecessor in interest; the plaintiff remains the same, it is only its shareholder which changed. The submission that this is a general reply also does not impress this Court. The proceedings before the Trade Mark Registry are not ministerial or of no consequence. They result in statutory right being created in favour of the parties. Though in Teleecare Network India Pvt. Ltd. (supra), this court held that the stand taken before the Trade Mark Registry would not act as an estoppel against the party, this view has been disagreed with by the Division Bench in Raman Kawatra (supra). In the facts of the present case, however, I need not enter into further discussion on the general effect of a statement made before the Trade Mark Registry, as in my opinion, the stand taken by the plaintiff before the Trade Mark Registry is relevant at least at the stage of considering grant of an interim injunction in favour of the plaintiff.
73. It is well settled that for grant of an interim injunction, the claim is to be tested on the trinity test of prima facie case, balance of convenience, and irreparable harm [Refer: Power Control Appliances (supra)].
74. For the reasons stated hereinabove, the plaintiff has been able to make out a prima facie case in its favour. However, the balance of convenience is in favour of the defendant, who is likely to suffer grave irreparable injury in case an ad interim injunction prayed for by the plaintiff is granted. As noted, the defendant has been using the mark since 1990 and the mark is also registered in its favour. The plaintiff can also be compensated in terms of damages in case the defendant eventually fails.
75. The defendant has asserted that it is using the impugned trade mark only for certain goods. This Court, by an ad interim order dated 22.10.2020, granted liberty to the plaintiff to move the court if the defendant were to switch over to the products other than the product which are presently manufactured and sold by it. The learned counsel for the defendant has submitted that it has not expanded its range of products and is still confined in Namkeen and Snack items.
76. As has been held hereinabove, the two marks are identical in nature; the plaintiff is the prior adopter of the mark; and the use of the mark is likely to cause confusion in the minds of the public; and it is only on account of delay by the plaintiff in approaching this Court, and that the defendant has obtained registration of its marks, that the interim injunction as prayed for by the plaintiff is not being granted.
77. In view of the above, by way of this interim order, the defendant is restrained from using the subject mark ‘MODERN’ (in English or Hindi or other vernacular language) for the goods other than that were being sold by the defendant using the subject mark on the date of filing of the Suit by the plaintiff. The defendant shall be allowed to use the subject mark only in the labels that were in use by the defendant on the date of the filing of the present Suit by the plaintiff and/or are registered in favour of the defendant with the subject mark.
78. The defendant shall, on an affidavit, disclose the range of its products and the marks used by it for the same. Such affidavit be filed within a period of four weeks from today.
79. The defendant shall remain restrained from expanding its line of product using the impugned mark ‘MODERN’ in any form during the pendency of the present suit.
80. The defendant shall, on affidavit, also file a statement of the sales turnover of its products using the subject mark ‘MODERN’, on a bi-annual basis.
81. The applications are disposed of with the above directions.
82. It is clarified that all and any observations made hereinabove are only prima facie in nature and do not reflect the final findings of this court on merits. CS(COMM) 299/2020 CS(COMM) 460/2020 & I.A. 17069/2022
83. List before the learned Joint Registrar (Judicial) on 28th August, 2023 for further proceedings.
NAVIN CHAWLA, J. JULY 04, 2023/KP/RP