Delhi High Court: In an application filed by Lt. Overseas North America Inc. (plaintiff) seeking to restrain KRBL Limited (defendant) from producing, selling etc., bearing the impugned mark/ package ‘ZABREEN ROYAL’ which is identical/deceptively like the plaintiff’s mark/label ‘ROYAL’ to result in infringement or passing off or unfair competition or their dilution, Navin Chawla, J., restrained the defendant from using the packaging complained of by the plaintiff during the pendency of the present suit.
It is the case of the plaintiffs that they are in the business inter alia of processing, marketing and exporting rice. The plaintiffs are aggrieved by the adoption of the mark ‘ZABREEN ROYAL’ by the defendant for the manufacture, sale, and distribution of its Basmati Rice. In April 2022, plaintiff 1 learned of the defendant’s use of the impugned mark through the plaintiff’s network of sales team. It was claimed that the adoption of the impugned mark, being deceptively similar to the plaintiff’s mark will cause irreparable harm and injury to the plaintiffs.
The main issue under consideration is whether the word ‘ROYAL’ is descriptive or suggestive of the product- rice and, therefore, if any exclusive right therein can be claimed by the plaintiffs.
The Court noted that in ‘McCarthy on Trademarks and Unfair Competition’, the author explained that the most popular test with the Court to determine whether the mark is ‘descriptive’ or ‘suggestive’ is the ‘Imagination Test’. The more imagination that is required on the customer’s part to get some direct description of the product from the term, the more likely the term is ‘suggestive’, and not ‘descriptive’. A descriptive term directly and clearly conveys information about the ingredients, qualities or characteristics of the product or service, whereas the ‘suggestive’ term only indirectly indicates the same.
The second test suggested by the learned author is ‘The Competitors Need Test’, which is the word or words likely to be needed by competitive sellers to describe their goods? If the answer is positive, then the word/words are descriptive, otherwise, they may just be suggestive.
Placing reliance on Bata India Limited v. Chawla Boot House, 2019 SCC OnLine Del 8147, the Court observed that a laudatory word, ‘ROYAL’ is not immediately connectable to rice, it would require a large amount of imagination for the consumer to form a connection of the word ‘ROYAL’ to rice. It would require a reasoning process to determine the attributes of rice. Further, applying the ‘Competitor’s Need Test’ again, the word ‘ROYAL’ per se is not required by the competitors to be used to describe the product-rice or its quality. The word ‘ROYAL’ is neither a natural synonym for the product nor its attribute.
Thus, the Court held that the packaging would show that the word ‘ROYAL’ has been used prominently in the packaging and does not depict the quality of the rice of the defendant but comes across as a trademark. The use of the same would also lead to dilution of the mark of the plaintiffs and, therefore, cannot be permitted in such a manner.
[Lt Overseas North America Inc. v. KRBL Limited, 2023 SCC OnLine Del 1121, decided on 24-02-2023]
Advocates who appeared in this case:
Mr. J. Sai Deepak & Mr. Avinash K. Sharma & Ms. Shaktiki Sharma, Mr. R. Abhishek, Advocates for the Plaintiffs;
Mr. Anirudh Bakhru, Mr. Ayush Puri, Ms. Tejaswini Chandrasekhar, Mr. Umang Tyagi & Mr. Prateek Kumar Jha, Advocates for the Defendant.