Delhi High Court: In a case wherein an application was filed for restraining Kian Agro Processing (P) Ltd. from using, selling, exporting, advertising or in any other mode or manner dealing in or using the mark ‘TAJ MAHAL’ (words or device), a Single Judge Bench of Navin Chawla, J. granted ad-interim injunction to New Bharat Overseas and restrained Kian Agro Processing (P) Ltd. from affixing the mark ‘TAJ MAHAL’ or any other mark deceptively similar to the registered marks for the purposes of selling or marketing rice in India or for export to any entity, till the pendency of the suit.
The plaintiff was engaged in the business of processing, marketing, and exporting rice of various kinds, including basmati rice and non-basmati rice. The plaintiff adopted the mark ‘TAJ MAHAL’ in 1978 and had been selling the same all over India and exporting to Europe, USA, Canada, and the Middle East. The mark ‘TAJ MAHAL’ had been registered in Class 30 under the Trade Marks Act, 1999 (Act).
Submissions on behalf of the Plaintiff
The plaintiff submitted that the defendants had adopted the same mark ‘TAJ MAHAL’ for the manufacture and export of rice and a complaint regarding the same was made to the defendants as the consignment of rice bearing the said mark was being exported to Saudi Arabia. Since the defendants did not act on the complaint, the plaintiff filed the present application. Further, it was submitted that despite the knowledge of the fact that the buyer from Saudi Arabia was a former distributor of the plaintiff, defendants started supplying rice under the mark of the plaintiff, that is, ‘TAJ MAHAL’. Therefore, the defendants’ use of the mark would amount to infringement in terms of Section 29(2)(c) read with Section 29(3) of the Act.
Submissions on behalf of the Defendants
The defendants submitted that they were not independently claiming any rights over the trade mark ‘TAJ MAHAL’ for rice, they were merely affixing the mark belonging to the defendants for the export of rice. It was submitted that the plaintiff had filed the present application with a mala fide intent, merely to defeat the competition for the export of rice. Further, it was submitted that the mark of the defendant was in Arabic and therefore, there was no possibility of confusion or deception being caused by the affixation of the impugned mark.
The defendants were using the mark since 1983 but got the mark registered in 1999 and thereafter, the registration had been renewed from time to time and was now valid up to 2029. The same mark had also been registered in Saudi Arabia in 2019 and was valid up to 2028. Moreover, the defendants were exporting and selling rice under the said trade mark only for Saudi Arabia.
Analysis, Law, and Decision
The Court opined that it was clear that the mark in which export was being made by the defendants was identical to the registered trade mark of the plaintiff and the goods for which it was used, that is, rice, were also identical. Therefore, in terms of Section 29(2)(c) read with Section 29(3) of the Act, such use would amount to infringement of the registered trade mark of the plaintiff.
The Court rejected the plea of the defendants that the mark was being affixed in Arabic language as Section 29(9) of the Act stated that where the distinctive element of a registered trade mark consisted of or included words, the trade mark may be infringed by the spoken use of those words. For this, the Court relied on the Indian Express Ltd. v. Chandra Prakash Shivahare, 2015 SCC OnLine Bom 5541, wherein it was held that “it was well settled that the use of the infringing mark in the form of a translation (same trade mark but in a different language) or its transliteration amounted to infringement”.
In the Coca-Cola Company v. Bisleri International (P) Ltd., 2009 SCC OnLine Del 3275, this Court held that exporting goods from a country was to be considered as a sale within the country from where the goods were exported and the same amounted to infringement of a trade mark. Further, in Friends Overseas v. Swadi Product U.K. Ltd., 2012 SCC OnLine Del 3353, this Court held that merely because goods bearing an impugned mark were only exported, it did not follow either as a question of law or even a fact that the proprietor of the mark was not likely to suffer substantial damage to his property in the goodwill.
The Court noted that the plaintiff was the registered proprietor of the mark ‘TAJ MAHAL’ in India and the defendants do not have any registration in the impugned mark in India. Further, the Court noted that the plaintiff was a prior adopter of the mark in India and therefore, Sections 29(6) and 56(1) of the Act would inure to the benefit of the plaintiff and against the defendants. Moreover, the mark being identical and the use of the same by the defendants even for export of rice would amount to infringement of the mark.
The Court held that the plaintiff had been able to make out a good prima facie case against the defendants and the balance of convenience was also in favour of the plaintiff and against the defendants and the plaintiff was likely to suffer grave irreparable injury in case the ad-interim protection was not granted in its favour.
Therefore, the Court granted ad-interim injunction in favour of the plaintiff and restrained the defendants from affixing the mark ‘TAJ MAHAL’ or any other mark deceptively similar to the registered marks of the plaintiff for the purposes of selling or marketing rice in India or for export to any entity, during the pendency of the suit.
The matter would next be listed on 27-2-2023.
[New Bharat Overseas v. Kian Agro Processing (P) Ltd., 2022 SCC OnLine Del 4575, decided on 23-12-2022]
Advocates who appeared in this case:
For the Plaintiff: Advocate Swathi Sukumar;
Advocate Santanam Swaminadhan;
Advocate Rahul Sharma;
Advocate Kartik Malhotra;
Advocate Naveen Nagarjuna;
For the Defendant(s): Advocate Ashish Aggarwal;
Advocate Nalin Dhingra;
Advocate S.K. Bansal;
Advocate Amitabh Suman.