Del HC | Will the rights of a prior user override those of subsequent user even though it had been accorded registration of its trademark? All-Inclusive Report on Trademark Infringement of ‘Rajdhani’

Delhi High Court: Jayant Nath, J., did a comprehensive analysis of the matter involving trademark infringement.

Legacy of Rajdhani

Plaintiff had originally conceived and adopted the trademark/label ‘Rajdhani’ for several products. Plaintiff company was formed in 1983 and carried forward the said business under the trademark/label’ Rajdhani’.

Trademarks/Labels are owned by the plaintiff company and ‘Rajdhani Flour Mills Limited’ as a sister concern of the plaintiff company vide an agreement.

Further, it was stated that the plaintiff and Rajdhani Flour Mills have co-existing rights in the trademark/labels in question.

It is stated that the plaintiff came into existence in 1983. Therefore, there is no question of the plaintiff using the composite trade mark ‘Rajdhani’ since 1966 as claimed.

Even if for some reason it was assumed that the plaintiff had been using the trademark since inception, the defendants have been continuously using the trademark ‘Rajdhani’ and its variants since 1965.

Analysis, Law and Decision

Whether plaintiff has any rights to the trade mark RAJDHANI keeping into account the alleged memorandum of family settlement?

It was claimed that the origin of the trade mark in question RAJDHANI was in 1966, present director of the plaintiff conceived and adopted the trade mark/label.

Prima facie, Court opined that the plea of defendants that pursuant to the family settlement, no rights flow to the plaintiff was without merits.

Adding to the above, Bench stated that the said settlement conferred rights on the trade mark RADHANI in favour of the plaintiff/ director of the plaintiff. The mark has also been registered in the name of the plaintiff. Admittedly, no steps have been taken by the plaintiff for registration of the assignment of the trade mark in favour of the plaintiff. However, it was not urged before the court that it was mandatory to register the assignment in favour of the plaintiff under the Trade Marks Act.

Merely because the defendant’s trademark is not registered would not entitle the plaintiff to any interim injunction. Supreme Court’s decision in Neon Laboratories Ltd v. Medical Technologies Ltd., (2016) 2 SCC 672 was relied upon.

From the above decision of the Supreme Court, what follows is that the ‘first in the market’ test has always enjoyed pre-eminence.

The rights of a prior user will normally override those of the subsequent user even though it had been accorded registration of its trademark.

Prima facie the reliance of the defendant on documents to show the date of user of the trademark was misplaced.

In the light of the documents on record, it is difficult to, at this stage, prima facie without leading further evidence to accept the plea of the defendant that it has been using the trademark ‘Rajdhani’ since 1965 as alleged.

Prima Facie the defendant had failed to show prior user of the trademark in question.

With regard to alleged delay in approaching the Court, Bench held that delay per se may not always be sufficient to disentitle the plaintiff to grant of an interim order.

Adding to the above, Court stated that prima facie in view of the registered Memorandum of Family Settlement dated 31-03-2009 filed by the plaintiff, the plaintiff traces its user of the trademark since 1966. The plaintiff had also placed on record invoices starting from the year 2006 pertaining to the said products with the trademark in question.

Hence, High Court held that prima facie, the plaintiff was the first in the market with the trademark ‘Rajdhani’ and was the registered owner of the said trademark.

The defendant was using the trademark ‘Rajdhani’ for allied and cognate goods which was identical as that of the trademark of the plaintiff and prima facie infringing the rights of the plaintiff.

Therefore, an interim injunction was passed in favour of the plaintiff against the defendants restraining defendants its directors, proprietors, etc. from using in any manner the trademark ‘Rajdhani’ or any other trademark which is deceptively similar to the trademark of the plaintiff.

In view of the above application was disposed of. [Victoria Foods (P) Ltd. v. Rajdhani Masala Co., 2021 SCC OnLine Del 4224, decided on 1-09-2021]

Advocates before the Court:

For the Plaintiff: Dayan Krishnan, Sr. Adv. with Rohit Gandhi, Manish Singhal, Adish Srivastava and Sukrit Seth, Advs.

For the Defendants: Kapil Sibal & Chander Lall, Sr. Advs. with Ankur Singhal, Mr.Sajad Sultan and Nancy Roy, Advs.

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