Preetendra Singh Aulakh v. Green Light Foods Pvt. Ltd.

15. The plaintiff claims that the defendant has copied the marks of the plaintiff with a dishonest intention to deceive the consumer and the public. Such adoption and use of the marks by the defendant amounts to infringment of the plaintiff’s trade marks, passing off, and unfair competition. ii) Case of the defendant

16. The defendant, in its written statement as also the counterclaim, states that it is the proprietor of the ‘MONSOON HARVEST’ marks, used by the defendant for the goods falling under Class 30. The defendant has been making millet-based nutrition bars, cookies, muesli, granola, breakfast cereals, nut bars, granola bars, energy bars, snack bars and confectionary under the ‘MONSOON HARVEST’ marks since the year 2015. The business of the defendant is not solely limited to India but has also expanded to countries such as Singapore, Maldives and the United Arab Emirates.

17. It is stated that the goods of the plaintiff are different from those of the defendant.

18. The defendant further disputes the reputation of the plaintiff in the ‘MONSOON HARVEST FARMS’ marks.

19. In paragraph 14 of the Written Statement, the defendant has provided its revenue figures from the sale of the goods bearing the ‘MONSOON HARVEST’ marks for the Financial Year 2016-17 to 2019-20. The defendant has also mentioned its promotional expenses in paragraph 15 of the Written Statement. The defendant also lists out accolades which the goods of the defendant bearing the ‘MONSOON HARVEST’ marks have received, including but not limited to being awarded stars by a panel of five hundred global food experts at the „Great Taste Awards‟ by the Guild of Fine Foods in the United Kingdom in the year 2019. The defendant, further, goes on to provide the details of its print as also social media presence; having been covered in publications such as the „Economic Times‟, „The Hindu‟ and „Vogue India‟ as also having over 6,000 followers on its Facebook page and more than 15,000 followers on its official Instagram handle.

20. The defendant states that the channel of trade for its goods bearing the ‘MONSOON HARVEST’ marks is not only limited to premium brick-and-mortar grocery stores such as ‘Modern Bazaar‟, ‘Le Marche‟ and ‘Foodhall‟, but also extends to their own website bearing the domain name www.monsoonharvest.in and third-party ecommerce platforms like ‘Amazon‟, „BigBasket‟ and ‘Flipkart‟.

21. The defendant states that it has filed the following applications to obtain registrations of its trade marks:- Registration No. Class User Since Date of application Status (word) 30 09/09/2016 05/06/2017 Opposed by the Plaintiff Goods: Muesli, Granola in a variety of Flavours, Tastes, Nut Bars, Granola Bars, Energy Bars, Snack Bars in a variety of flavours, Tastes, Muesli and Granola in a variety of flavours, Tastes, Nut Bars, Granola Bars, Energy Bars, Snack Bars in a variety of Flavours, Tastes, Cookies, Biscuits in a variety of Flavours, Tastes, Bread, Pastry and Confectionery, Mustard, Vinegar, Sauces, Condiments, Spices. (device) 30 09/09/2016 27/09/2017 Opposed by the Plaintiff Goods: Muesli, Granola in a variety of flavours, Tastes, Nut bars, Granola Bars, Energy Bars, Snack Bars in a variety of flavours, Tastes, Muesli and Granola in a variety of flavours, Tastes, Nut Bars, Granola Bars, Energy Bars, Snack Bars in a variety of flavours, Tastes, Cookies, Biscuits in a variety of flavours, Tastes, Bread, Pastry and Confectionery, Mustard, Vinegar, Sauces, Condiments, Spices.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR THE PLAINTIFF

22. Mr. Chander M. Lall, the learned senior counsel for the plaintiff, submits that the adoption and use of the ‘MONSOON HARVEST’ marks by the defendant amounts to a flagrant violation of the plaintiff’s intellectual property rights, infringement of its trade mark, passing off of the goods of the defendant as those of the plaintiff, as also unfair competition.

23. He submits that by virtue of being the prior user as also being the registered proprietor of the marks, the plaintiff has the exclusive right to use the ‘MONSOON HARVEST FARMS’ marks in India. He states that unauthorised use of a mark deceptively and confusingly similar to the ‘MONSOON HARVEST FARMS’ marks by the defendant would lead to erosion of the distinctiveness of the ‘MONSOON HARVEST FARMS’ marks of the plaintiff, which enjoy an enormous reputation and goodwill in India.

24. Placing reliance on the Notice of Opposition filed by the defendant to the trade mark application no. 3688133 of the plaintiff under Class 30, wherein the defendant admits that the marks of the plaintiff and the defendant are exactly similar, the learned senior counsel for the plaintiff submits that the defendant cannot at this stage be permitted to take a contrary stand and adopt a virtually identical mark and domain name in relation to the identical goods, that is, edible goods.

25. On the submission of the defendant that the goods of the plaintiff and the defendant are different, he submits that the plaintiff and the defendant deal in similar goods, that is, food items and, therefore, the artificial distinction drawn by the defendant is incorrect.

26. He submits that merely because the registration obtained by the plaintiff of its trade marks is restricted to Edible Oils and Raw and unprocessed agricultural products etc., would not make a difference to its claim in the present suit. He submits that the plaintiff had to restrict the goods covered in its application as at that time the plaintiff was dealing only in those goods.

27. He submits that merely because the defendant has transacted in a higher volume of sale would also not come to its aid, inasmuch as, the right of the prior adopter of the mark shall trump that of the subsequent adopter of the mark. He submits that even a single use of the mark is sufficient to entitle the plaintiff to seek protection of its mark. In support, he places reliance on the judgement of this Court in Century Traders v. Roshan Lal Duggar & Co.,1977 SCC OnLine Del

50.

28. He submits that for the purposes of the present application, though the plaintiff has shown instances of actual confusion being caused amongst the customers due to the adoption of a similar mark by the defendant, the plaintiff is not to show that the adoption of the marks by the defendant was fraudulent. Once it is shown that the marks are similar for similar goods, an injunction must follow. In support, he relies upon the judgement of the Supreme Court in Laxmikant V. Patel v. Chetanbhai Shah & Anr., (2002) 3 SCC 65.

29. Further, placing reliance on the judgment of this Court in Teleecare Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. & Ors., 2019 SCC OnLine Del 8739, he reiterates that there can be no estoppel against a statute. He submits that therefore, the reply filed by the plaintiff to the Examination Report is not relevant. In any case, for one of such applications, the plaintiff has already filed an application seeking amendment of its reply.

30. He submits that the mere addition of word ‘WINGREENS’ is not sufficient to distinguish the mark of the defendant from that of the plaintiff.

SUBMISSIONS OF THE LEARNED SENIOR COUNSEL FOR THE DEFENDANT

31. On the other hand, Mr. Jayant Mehta, the learned senior counsel for the defendant, at the outset submits that the defendant has now adopted a new mark, that is, ‘WINGREENS MONSOON HARVEST’, which creates an even-wider difference between the marks of the plaintiff and the defendant. He submits that it is trite law that marks have to be compared as a whole and with the affixation of the prefix ‘WINGREENS’, there exists no question of either infringement or passing off of the marks of the plaintiff by the defendant. Placing reliance on Meso Pvt. Ltd., Mumbai v. Liberty Shoes Ltd., Haryana, 2020 (1) Mh.L.J., he submits that the addition of a house mark, especially when such house mark also has a certain reputation and goodwill, would obviate any chance of confusion in the mind of an unwary consumer.

32. The learned senior counsel for the defendant submits that the plaintiff is estopped from taking a stand that the marks of the plaintiff and the defendant are visually, phonetically and/or structurally similar. Drawing the attention of this Court to the response to the Examination Report filed by the plaintiff in the application no. 3688133 and 3688132, wherein the plaintiff stated that the competing marks were visually, phonetically and structually different, and accordingly there could not be any confusion as to the source of origin, the learned senior counsel for the defendant asserts that the plaintiff cannot take a contradictory stand now. He submits that for this reason alone, the Suit and the application are liable to be dismissed. He submits that though the plaintiff has moved an application seeking to withdraw such admission in one of the trade mark applications, no such attempt has been made for the other. He submits that even otherwise, the plaintiff shall be estopped from now contending to the contrary. In support, he places reliance on the following orders and judgments of this Court:i) S.K. Sachdeva & Anr. v. Shri Educare Ltd. & Anr.,2016 (65) PTC 614(Del)(DB); ii) Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani & Anr., 2022/DHC/004255; iii)Living Media India Limited & Anr. v. Alpha Dealcom Pvt Ltd. & Ors., (2014) 3 HCC (Del) 248; iv) Mankind Pharma Ltd v. Chandra Mani Tiwari & Anr., CS(COMM) 100/2017; v) Order dated 30.07.2019 in Poly Medicure Limited v. Polybond India Pvt. Ltd., CS (COMM) 1292/2016; and vi) Om Logistics Ltd. v. Sh. Mahendra Pandey, CS (COMM) 447/2021. vii) Raman Kwatra & Anr. v. M/s KEI Industries Limited, 2023/DHC/000083.

33. The learned senior counsel for the defendant submits that the plaintiff had originally applied for registration of its marks under Application Nos. 3688135 and 3688134 under Class 29 for ‘Organic Food, Processed and Raw and Other under this Class’. On the direction from the Registry to limit the scope of these applications, the plaintiff, by way of an amendment, restricted the scope of the applications only to edible oils. Similarly, for Application NO. 3688137 under Class 30, the plainitff restricted the application to ‘Raw and unprocessed agricultural, horticultural products; raw and unprocessed grains and seeds; fresh fruit and vegetable and fresh herbs‟. By the said conduct, the plaintiff has disentitled himself from claiming a right in respect of the goods beyond what are specifically mentioned in the registrations granted. In support, he places reliance on Mittal Electronics v. Sujata Home Appliances (P) Ltd. & Ors., CS(COMM) 60/2020; Technova Tapes (India) Pvt. Ltd. v. TechNova Imaging Systems (P) Limited, 2019 SCC OnLine Mad 38987; Vishnudas Trading as Vishnudas Kishandas v. Vazir Sultan Tobacco Co. Ltd., Hyderabad, AIR 1996 SC 2275; and Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd., (2018) 9 SCC 183, to submit that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and particularly when he is not using the said trade mark in respect of certain goods falling under the same class.

34. He submits that the plaintiff has failed to show that the goods in which either the plaintiff or the defendant are carrying on their businesses are allied or cognate, or even similar to the goods of the other.

35. The learned senior counsel for the defendant submits the defendant, in any case, is an honest and concurrent user of the marks and is entitled to protection of its user of the marks under Section 34 of the Act. He submits that the defendant began using the ‘MONSOON HARVEST’ marks for processed food items in the year 2015, while the plaintiff began using the ‘MONSOON HARVEST FARMS’ marks with respect to pickles, that is a processesed food item, only in the year 2017. Therefore, the defendant is the prior user of the marks for the processed food items.

ANALYSIS AND FINDINGS

36. I have considered the submissions made by the learned senior counsels for both the parties. i. Whether the marks in question are deceptively similar?

37. The first issue that needs to be determined is whether the two marks, which are, ‘MONSOON HARVEST FARMS’ of the plaintiff and ‘WINGREENS MONSOON HARVEST’ of the defendant, are deceptively similar to each other. In my prima facie view, the two marks are deceptively similar to each other. The addition of the word ‘WINGREENS’ to the marks of the defendant is not sufficient to bring about a distinction in the two marks.

38. The test to be applied in determining whether the marks in question are deceptively similar to each other is that of an unwary purchaser with an average intelligence and imperfect recollection. The Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, (1963) 2 SCR 484, has held as under:

39. On the submission of the learned counsel for the defendant that since the defendant has added the word ‘WINGREENS’ to its mark, the said mark is not deceptively similar to the plaintiff’s mark, I again do not find merit. In Subhash Chand Bansal v. Khadim's and Another, 2012 SCC OnLine Del 4326, it has been held that mere use of a prefix may not be sufficient to distinguish the two marks. I quote from the judgment as under:-

40. Therefore, mere addition of the word ‘WINGREENS’ cannot reduce the deceptive similarity of the mark of the defendant with that the plaintiff. I find that even with this addition there is a strong likelihood of the defendant’s mark being confused with the mark of the plaintiff. Accordingly, I find that the two marks in question are similar to each other. ii. Whether the Rule of Estoppel applies on stand taken before the

41. This now takes me on to the second issue as to whether the plaintiff, due to the stand taken by him in the reply to the Examination Reports in his application nos. 3688133 and 3688132, is estopped from contending that the two marks are similar to each other.

42. In considering the said issue, it must also be kept in mind that the defendant, in its opposition seeking rectification of the plaintiff’s registration under application no. 3688133, has taken a stand that the two marks are exactly similar to each other. The relevant extract from the notice of opposition is reprodcued hereinbelow:- “9. The Trademark "MANSOON HARVEST FARMS" applied for registration by PREETENDRA SINGH AULAKH vide APPLICATION NO.3688133 IN CLASS 30 is completely identical to the Trademark of this opponent. The mark applied by the said application is exactly similar with an addition of a suffix i.e., FARM to the mark of this opponent. The mark applied by applicant would definitely mislead the general public and traders to believe that the goods manufactured by the said applicant are also of the manufacture of the opponent.

10. The mark applied by the applicant is similar to an earlier trademark and is likely to deceive public or cause confusion and also is prevented from the law of passing off.”

43. Therefore, both the parties to the present suit have taken contradictory stands before the Trade Marks Registry and before this Court. The principle of estoppel, if it is to apply, shall apply equally to both the parties, therefore, leaving for this Court to determine whether the two marks can be said to be similar to each other or not.

44. In Raman Kwatra (supra), the Court was confronted with a position where the plaintiff therein had obtained registration of its marks by contending that the mark of the defendant that was cited in the Examination Report was not similar. The Court in the factual background of that case observed as under:-

46. Mr. Lall also submitted that the respondent had reserved its right to take the appropriate legal remedies and its response to the Trade Mark Registry was without prejudice to its rights and contentions. Undoubtedly, the respondent had reserved its right to avail of appropriate remedies in respect of the impugned trademark, however, reserving a right to avail of other remedies would not include the right to make a contrary assertion. A party approaching the Trade Marks Registry must be held to its statements made before the Trade Marks Registry and cannot be permitted to make a factual assertion contrary to what it claims before the Trade Marks Registry. For this reason, as well, it was not permissible for the respondent to claim that the goods covered under its trademarks were similar to those of the appellant.”

45. In the present case, the plaintiff’s application, wherein a contradictory stand has been taken by the plaintiff, has not proceeded to registration. The plaintiff is not claiming its relief in the present suit based only on these applications. The plaintiff has also filed an application seeking to amend its reply in one of the applications. Therefore, in my opinion, the above judgment would not come to much assistance for the defendant.

46. Though various other judgments have also been cited by both the parties on this issue, in view of the judgment of this Court in Raman Kwatra & Anr. (supra), laying down the law on the subject, I need not revisit the same by discussing various other judgments that have been cited by the parties. Suffice it to say that becaue of both the parties taking contradictory stands before this Court and before the merit rather than on the basis of the stand taken by them before the iii. Whether the goods in question are similar?

47. Another question that arises for consideration is as to whether the goods of the plaintiff and that of the defendant are similar. As noted hereinabove, it is the case of the defendant that the plaintiff has registered its marks for edible oils, raw and unprocessed agricultural, horticultural products, and fresh fruits and vegetables etc., while the defendant deals in processed food items like millet based nutrition bars, cookies, muesli etc. and therefore, these goods are not similar. It is, therefore, argued by the defendant that the goods are different and, therefore, there is no possibility of confusion being caused due to the use of the impugned marks by the defendant.

48. In answer to the above, the test of determining ‘allied/cognate goods or services’ laid down by this Court in FDC Limited v. Docusuggest Healthcare, 2017 SCC OnLine Del 6381, is reproduced hereinbelow: “51. …… Allied/cognate goods or services, as understood from the material referred to below, are those goods/services which are not identical, but can be said to be related or similar in nature (See McCarthy on Trademarks and Unfair Competition, Fourth Edition, Vol 5). The Shorter Oxford English Dictionary on Historical Principles Fifth Edition 2002, Vol. 1. defines the term “Allied” as “connected by nature or qualities; having affinity” and the term “Cognate” as “akin in origin, nature or quality”. Reference may also be made to New Webster's Dictionary and Thesaurus of the English Language, 1992 which defines “Allied” as “relating in subject or kind” and “Cognate” as “1. adj. having a common ancestor or origin (of languages or words) having a common source or root (of subjects etc.) related, naturally grouped together.”. Cognate goods/services can be described, inter alia, as goods or services which have a trade connection - as in glucose and biscuits (See Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142) or which are intended for the same class of customers - as in television picture tubes (parts thereof, video tapes and cassettes and television tuners etc.) and televisions, tuners and T.V. Kits (See Prakash Industries Ltd. v. Rajan Enterprises (1994) 14 PTC 31), or are complementary to each other - as in toothbrushes and toothpaste (See HM Sariya v. Ajanta India Ltd. (2006) 33 PTC 4).

53. Now, to determine whether the defendants' services are allied and cognate to plaintiff's goods, it is essential to first discuss the law on similarity in goods/services in trademarks and its development so far. While the Act is silent on the factors to be considered for similarity in goods/services, the Courts in India relying upon international cases and literature, have consolidated the guiding principles and factors found relevant in ascertaining the similarity between goods/services. They are as follows:

1. In Assam Roofing Ltd. v. JSB Cement LLP 2015 SCC OnLine Cal 6581, the learned Single Judge in Para 80 observes- “The test of similarity of goods is looked at from a business and commercial point of view. The nature and composition of the goods, the respective uses of the articles and the trade channels through which they are brought and sold all go into consideration in this context”. (emphasis supplied)

2. In Kerly's Law of Trade Marks and Trade Names, 15 Edition 2011, the learned Author in Para 9-073 has stated as under: - “As para.23 of the decision in Canon v. MQM (1999) R.P.C. 117 makes clear, all factors relating to the goods or services themselves must be taken into account. These include, inter alia, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. It is clear that goods in different classes may nevertheless be considered similar, and likewise that goods or services within the same class may be found to not be similar.” (emphasis supplied)

3. In Para 9-075, the Learned Author has mentioned some illustrations on similar goods or services including under Para 9-078 ““Services offered by beauty salons; solarium services” similar to “business assistance with beauty preparations, sales” and “beauty preparations, perfumery, cosmetics dietetic substances””. The said illustration sources from the case of Beauty Shop Application v. Opposition of Evora BV [1999] E.T.M.R. 20, wherein the Office for Harmonization in the Internal Market (Trade Marks and Designs) also known as the Opposition Division held the defendant's services to be similar to the plaintiff's services and goods by observing that “the goods and services of the conflicting marks could be offered together and be intended for the same public.”

4. In British Sugar Plc. v. James Robertson & Sons Ltd. [1996] R.P.C. 281 at 294-297, relied upon in Balkrishna Hatcheries v. Nandos International Ltd. 2007 SCC OnLine Bom 449 and Advance Magazine Publishers, Inc. v. Just Lifestyle Pvt. Ltd. 2016 SCC OnLine Bom 8417, the court laid down the objective test for similarity of description of goods/services as follows: (a) “The uses of the respective goods or services; (b) The users of the respective goods or services;

(c) The physical nature of the goods or acts of service;

(d) The trade channels through which goods or services reach the market;

(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are, or are likely to be, found on the same or different shelves; and (f) The extent to which the respective goods and services are in competition with each other: that inquiry may take into account how those in trade classify goods, for instance whether market research companies, who of course act for industry, put goods or services in the same or different sectors.”

5. Kerly 15 ed. while relying upon Canon (supra), further observes in Para 9-065 that the element of distinctive character of a trademark and its reputation is also viewed when determining similarity between the goods and services and whether such similarity is sufficient to give rise to the likelihood of confusion.” (Emphasis supplied)

49. Applying the above test to the facts of the present case, it is observed that the respective goods of the plaintiff and the defendant are under the umbrella of food items; the plaintiff deals in the sale of raw and unprocessed agricultural and horticultural products, while the defendant sells processed food items such as granola bars, energy bars, cookies, bread and other confections. The intended purpose for both the plaintiff and the defendant is to market and sell their food items to the public at large. The respective users of the goods of both the parties are the end point retail consumers. The plaintiff and the defendant are entities which come under the food industry. Moreover, the goods of the parties would be normally sold through the same supply chain to the same customers who may consider the items sold by the defendant as emanating from the plaintiff. In fact, the plaintiff has filed on record evidence showing actual complaints of confusion being caused in the mind of an unwary consumer.

50. It, therefore, in my prima facie opinion that the goods of the plaintiff and the defendant are allied and cognate products.

51. The plaintiff also claims to be expanding its business into processed food items, which can be considered as a natural progression of its business. In Montari Overseas Limited v. Montari Industries Ltd., 1995 SCC OnLine Del 865, the Court while considering the question of whether the activities of the appellant therein were likely to cause confusion in the mind of the average consumer and tarnish the goodwill of the respondent therein in its product, observed as under:-

57. In Mittal Electronics (supra), the Court found that the goods being sold by the plaintiff and the defendant were different, with the only commonality being that of a geyser. The Court, therefore, vacated the interim order for the goods that were not found similar to those of the plaintiff.

58. In Vishnudas (supra), the Supreme Court allowed the rectification of the registration granted in favour of the respondent no.1 therein, on the ground of non-user of the registered mark in respect of ‘quiwam‟ and ‘zarda‟ by the respondent no.1 company. The Court held that though varieties of articles are made out of tobacco, they are used differently and have a distinctive quality and separate identity; in common trade channels such articles are not only held different and as distinct articles, but are marketed separately. The Court held that if a trader or a manufacturer actually trades in or manufactures only in one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy a monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers to get registration of separate and distinct goods, which may also be part of the product classification. The Court, however, clarified that its observations are only confined to the propriety and validity of the order of rectification of the registration of the trade mark in favour of the respondent company and it is not extended to a question of infringement of trade mark or passing off. In the present case, the claim of the plaintiff is of infringement and passing off and, therefore, has to be determined on the basis of the principles that have been laid down by the Courts for testing the same.

59. In Nandhini Deluxe(supra), the appellant therein had sought registration for the mark in goods which were held to be different from those of the respondent. The Court held that it was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent. The said judgment, therefore, has no application to the facts of the present case.

60. In Technova Tapes (India) Pvt. Ltd.(supra), the Court again found that the goods manufactured by the appellant therein and the respondent therein were all together different. The Court further found that the respondent therein had failed to show that it had invented the said mark. The Court also found that the adoption of the mark by the respondent was honest. The said judgment would again have no application to the facts of the present case.

61. In the present case, the plaitniff has explained that it confined its application seeking registration of its marks to only Edible Oil and raw and unprocessed food items as at that time, he was dealing only in those goods. The plaintiff is now expanding to even processed food items. Such food items, in my prima facie opinion, are cognate and allied. Therefore, the factum of the plaintiff curtailing the scope of its application for registration of its trade mark; and the goods falling under different classes for the purposes of registration, in my prima facie opinion, will not disentitle the plaintiff for grant of an injunction.The reliance of the defendant upon the history of the applications leading to the registration of the marks of the plaintiff, in my prima facie opinion, is erroneous and is liable to be rejected as such correspondence is not relevant for the adjudication of the present application. v. Whether the exception under Section 34 of the Act applies to the present case?

62. The learned senior counsel for the defendant has also relied upon Section 34 of the Act to contend that the defendant is the prior user of the processed food items that it manufactures and sells and, therefore, injunction should not follow.

63. Section 34 of the Act is reproduced hereinbelow:- “34. Saving for vested rights.—Nothing in this Act shall entitle the proprietor or a registered user of registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior— (a) to the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his; or (b) to the date of registration of the firstmentioned trade mark in respect of those goods or services in the name of the proprietor of a predecessor in title of his; whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second mentioned trade mark by reason only of the registration of the firstmentioned trade mark.”

64. Once it is held that the goods of the plaintiff and the defendant are allied and cognate, the exception carved out in Section 34 of the Act would not apply. It is applicable where the goods of the defendant are different from the ones in which the plaintiff deals in and the defendant is shown to be the prior user of the mark for such goods. It cannot apply where the defendant is using identical or similar marks to that of the plaintiff, and for goods which are similar to those of the plaintiff. The test is also of a claim based on the prior registrations of the mark. In the present case, the plaintiff is the prior adopter and user of the marks to that of the defendant. The defendant, therefore, in my prima facie opinion, is not entitled to the benefit of Section 34 of the Act. vi. Whether infringment is made out in the present case?

65. On the question of infringment of a registered trade mark, we must look to Section 29(2) of the Act. The same is reproduced as under:-

66. For raising a claim of infringement, the registered proprietor has to inter alia show similarity of the registered trade mark and similarity of the goods covered by such registered trade mark with the complained mark used by the other persons and which is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark. Identity of the goods and identity of the services is relevant and raises a presumption of the likelihood of confusion in terms of Section 29(2)(c) of the Act, however, is not a sine qua non. In the present case the claim of the plaintiff would fall in the scope of Section 29(2)(b) of the Act as the marks are prima facie deceptively similar and the goods are also similar to each other.

67. Though it may be true that on the asking of the Registrar of Trade Marks to limit the scope of protection sought in its applications, the plaintiff conceded to the same by restricting the scope of the registration to edible oils and raw and unprocessed agricultural and horticultural products etc., the plaintiff shall still be entitled to an interim injunction as, in my prima facie opinion, the plaintiff has been able to make out a case falling under Section 29(2)(b) of the Act. vii) Whether the plaintiff is entitled to the claim of passing off?

68. For the reasons stated hereiabove, the plaintiff has also been able to make out a prima facie case of passing of against the defendant.

69. In view of the above, I hold as under:a) The plaintiff is the registered proprietor of the mark ‘MONSOON HARVEST FARMS’ and is the prior user thereof; b) The mark of the plaintiff and the defendant prima facie appear to be similar both visually as also phonetically, with ‘MONSOON HARVEST’ being the dominant part thereof. Mere addition of the word ‘WINGREENS’ or the logo in the the defendant’s mark is not sufficient to distinguish the same on application of the test of an unwary purchaser of an average intelligence with an imperfect recollection; c) The plaintiff is claiming evidence of actual confusion caused to the consumer; d) The goods of the plaintiff and the defendant are similar and allied as they are food items which are sold over the counter and the attempt to distinguish them on one being processed and the other being unprocessed appears to be artificial;

70. The plaintiff, therefore, has been able to make out a prima facie case of infringment and passing off against the defendant.

71. The balance of convenience is also in favour of the plaintiff and against the defendant inasmuch as the plaintiff is the prior adopter of the mark and is likely to suffer grave irreparable injury in case the defendant is not restrained from selling its products using similar marks for similar goods.

RELIEF

72. In view of the above, the defendant is restrained from using the mark ‘MONSOON HARVEST’ and/or the logo and/or for the new mark and/or any other mark or name identical and/or deceptively and confusingly similar to the plaintiff’s earlier and registered trademarks MONSOON HARVEST FARMS and/or, either as, a trade mark or part of a trade mark, a trade name or corporate name or as part of a trade or corporate name, part of a domain name or in any other manner whatsoever, so as to infringe the registered trademarks of the plaintiff or pass off the same, till the pendency of the present suit.

73. The application is disposed of in the above terms.

74. It is made clear that any observation made hereinabove is only prima facie in nature and would not influence the Court at the final adjudication of the suit.

75. List on 28th July, 2023 before the learned Joint Registrar (Judicial). NAVIN CHAWLA, J. MAY 02, 2023/AB/DJ/KP