w w w . L a w y e r S e r v i c e s . i n



KBM Foods Pvt. Ltd. v/s Sachin Gupta


Company & Directors' Information:- J V S FOODS PRIVATE LIMITED [Active] CIN = U63023RJ1995PTC010336

    CS (COMM) No. 282 of 2019

    Decided On, 06 April 2021

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE V. KAMESWAR RAO

    For the Plaintiff: Anirudh Bakhru, Rupesh Aggarwal, Advocates. For the Defendant: S.K. Bansal, Advocate.



Judgment Text

I.A. 7965/2019

1. The plaintiff has filed the current application under Order 39 Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908 (“CPC” hereafter) with the following prayers:

(a) Restraining the Defendant, its principal officers, family members, servants, agents, dealers, distributors, retailers and/or anyone acting for and on his behalf from manufacturing, marketing, selling, offering for sale or advertising its goods i.e. spices by using the mark Gai Chaap, device of COW and the other essential features of the label and trade dress of the plaintiff either in isolation or in conjunction with each other and thereby causing confusion and deception in the course of trade and thereby passing off defendant's goods as that of the plaintiff's.

(b) Pass any other order(s) which this Hon'ble Court may be pleased to in the facts and circumstances of the present case.

2. The present suit has been filed by the Plaintiff seeking permanent injunction against the Defendant from using the trademark as well as the trade dress along with the mark “GAI CHAAP” along with the “COW” device with respect to the plaintiff’s products i.e. spices.

3. The Karol Bagh Masala Supplies company, a partnership, formed vide partnership deed dated April 22, 1969 was the predecessor-in-interest of the Plaintiff Co. and had been continuously and with bona fide using the trademark “GAI CHAAP” along with the “COW” device on its products since 1969. It is the claim of the plaintiff that these marks which had been applied for registration in class 30 under the Trade Marks Act, 1998 (“TM Act” hereafter) vide trademark application Nos. 748292, 748285 and 748288 and had been in use since 1969, were duly assigned to the plaintiff Co. vide Assignment deed date dated January 30, 2002.

4. The said partnership firm was dissolved vide dissolution deed dated January 23, 2002 and the plaintiff Co. vide an agreement of succession of business dated January 23, 2002 had acquired all the assets, liabilities, trademarks, goodwill, etc. of the partnership firm. As per the Plaintiff the purpose of forming the Plaintiff Co. according to the Memorandum of Association was to acquire and run the business of the partnership firm.

5. Thereafter the plaintiff had made slight changes to its label, trade dress and get up of its product in the year 2013 and this “trade dress” was then applied for registration with the application bearing No. 2802285. The plaintiff maintains that it had been using the trademark “GAI CHAAP” and “COW” device since the year 1969 and has claimed user with respect to the modified trade dress from the year 2013.

6. The plaintiff alleges that the defendant with a mala fide intent illegally got the trademark “GCMC” along with a “COW” device registered vide trademark Application No. 3531286 dated April 21, 2017 with user details mentioned as “proposed to be used”. Thereafter the plaintiff came across the Defendant’s trademark application No. 3673104 applied on November 11, 2017 with user details marked as “proposed to use”, which the plaintiff maintains is a replica of the label of the plaintiff.

7. The plaintiff has averred in the plaint that M/s. Radha Kishan Gobind Ram Ltd. (“RKGR” for short) which is run by Mr. Vikas Aggarwal (who is the brother of the authorised representative of the Plaintiff) claiming plaintiff’s predecessor i.e. the partnership, as its predecessor filed a suit against the defendant herein, being CS (COMM) 28 of 2018 on identical set of facts as that of the present suit on which an injunction was granted in favour of RKGR by this Court vide order dated January 12, 2018; wherein the defence taken by the defendant was that the user in the marks in question was the Plaintiff (herein) and not RKGR.

8. As per the plaintiff the settlement reached upon by the Defendant herein and RKGR vide order dated February 19, 2018 in FAO (OS) (COMM) 31/2018 wherein RKGR and the defendant herein proceeded to fraudulently divide the mark of the plaintiff amongst themselves. This settlement is stated to have been reached within a month of plaintiff filing a suit CS (COMM) 51 of 2018 against RKGR on October 22, 2018. The Plaintiff then filed an application being CM 36817/2018 seeking clarification of order dated February 19, 2018 in FAO (OS) (COMM) 31/2018; the said order was clarified by the Division Bench vide order dated September 10, 2018 to state that the settlement dated February 19, 2018 was inter se the parties therein and would not come in the way of the plaintiff to pursue its remedies in accordance with law. It was thereafter that the plaintiff has filed the present suit of passing off in May 2019.

SUBMISSIONS:

9. Mr. Anirudh Bakhru and Mr. Rupesh Aggarwal learned Counsels who appear on behalf of the Plaintiff have argued that this Court vide order dated February 24, 2020 in CS COMM 51/2018, had granted an injunction in favour of the plaintiff against RKGR who was a party to the settlement dated February 19, 2018, from using the trademark “GAI CHAAP” and “COW” device.

10. Mr. Bakhru has placed reliance on the following documents to show prior use of the trademark “GAI CHAAP”:

(i) Documents dating to the year 1983 of the Directorate of Marketing and Inspection (also known as Agmark Department) wherein the brand of the plaintiff’s predecessor-in-interest’s “Trade brand” has been written as “COW BRAND”/ “GAI CHAAP”;

(ii) Documents of FSSAI Department;

(iii) Invoices of sale of Plaintiff’s products showing sale under trademark “GAI CHAAP” from 1987-2019;

(iv) Television Commercial of plaintiff’s mark “GAI CHAAP” and “COW” device on AAJ TAK News channel in the year 2001-2002 with respective invoices.

11. He placed reliance on the following documents to prove that the reputation and Goodwill of trademark “GAI CHAAP” and “COW” device is with plaintiff:

(i) Audited Turnover Certificate of the plaintiff Co. mentioning Turnover of the plaintiff at 88.75 Crores from 2017-2018 pertaining to the Plaintiff’s mark “GAI CHAAP” and “COW” device as the plaintiff has never sold its spice products without the trademark “GAI CHAAP” and “COW” Device;

(ii) Certificate of CA of Plaintiff’s promotional expenses;

(iii) Advertisements in Newspapers;

(iv) Brochures and advertisements in magazines;

(v) Promotional Calendars;

(vi) Bills issued against advertisement of Plaintiff’s products;

(vii) Plaintiff’s Online promotions;

(viii) Television Commercial of plaintiff’s mark “GAI CHAAP” and “COW” device on AAJ TAK News channel in the year 2001-2002 with respective invoices.

12. Mr. Bakhru has argued that the prior user’s right will override those of the subsequent user even though the trademark of the subsequent user is registered. In the present suit, the plaintiff has shown and hence proved its prior use and goodwill by relying on the aforementioned documents. Mr. Bakhru has argued that the defendant has neither mentioned its sales or advertisement figures nor has it provided any reason as to why it adopted the impugned mark. The defendant being a dishonest adopter of the impugned mark is not a prior user and as per its own claim in its trademark application filed in the year 2017 its mark was “proposed to be used”; as per the plaintiff, this registration was obtained by fraud against which the plaintiff had already filed rectification application bearing No. 264376. The counterstatement/reply of the defendant to the said rectification application which has been placed on record, the defendant has placed reliance only on the settlement dated February 19, 2018 with RKGR. According to Mr. Bakhru, a coordinate bench of this Court vide order dated January 12, 2018 in CS(COMM) 28/2018 had not considered defendant?s registration while granting injunction against the defendant on identical set of facts. In this regard he has placed reliance on the following judgments:

(i) Neon Labs v. Medical Technologies Limited, VIII (2015) SLT 2=(2016) 2 SCC 672;

(ii) S. Syed Mohiden v. P. Sulochna Bai, (2016) 2 SCC 683;

(iii) N.R. Dongre v. Whirlpool Corporation, AIR 1995 Del 300;

(iv) Eicher Goodearth Pvt. Ltd. v. Krishna Mehta & Ors., 2015 (63) PTC 444 (Del);

(v) Century Traders v. Roshan Lal Duggar Co., 15 (1979) DLT 269;

(vi) LD Malhotra Industries v. Ropi Industries, ILR (1976) 1 Del 278; and

(vii) M/s. Radha Kishan Gobind Ram Ltd. v. Sachin Gupta, CS(COMM) 28/2018, dated January 12, 2018.

13. According to Mr. Bakhru, the use of a similar mark by a third party in violation of plaintiff’s right is no defence and that it is settled law; that it is the right of the parties who are before the Court which needs to be determined and the Court need not examine the right of other parties. The present suit being inter se between plaintiff and the defendant and therefore plaintiff’s rights with respect to third parties cannot be considered and plaintiff’s refusal to take action against third parties cannot be a defence. He supported his arguments on the following judgments:

(i) Prakash Roadline v. Prakash Parcel, (1992) 22 DRJ 489;

(ii) Pankaj Goel v. Dabur, 2008 (DLT SOFT) 6046=FAO (OS) 82 of 2008, dated July 04, 2008;

(iii) P.M. Diesel v. S.M. Diesel, 53 (1994) DLT 742=(1994) 28 DRJ 574; and

(iv) Century Traders (supra)

14. Mr. Bakhru has countered the defendant?s argument that the mark “GAI CHAAP” and “COW” device has become common to the trade and are descriptive by stating that the defendant having applied for registration of its impugned mark/label, which according to the plaintiff is a replica of the Plaintiff’s mark and label, disallows it from setting up this defence. According to him, a party who himself applied for a registration of a particular mark claiming ownership and exclusiveness cannot later claim that the said mark has become descriptive. He has relied on the judgments of coordinate benches of this Court in the following cases:

(i) Jiva Institute v. Indian Hotels Company, FAO(OS) 44/2007, dated May 30, 2005 and

(ii) Millennium & Copthorne International Limited v. Aryans Plaza Services Private Limited & Ors., CS(COMM) 774/2016, dated October 08, 2018.

15. It is the case of the plaintiff and so argued by Mr. Bakhru that the mark of the defendant when compared with that of the plaintiff’s would reveal that the defendant’s label is completely identical to Plaintiff’s label, which could not have been achieved or conceived without copying the label of the plaintiff and it is bound to cause confusion in the minds of general public most of whom are unwary consumers having imperfect memory and recollection. Mr. Bakhru contends that, it is a settled law that in a case of passing off action, similarities rather than the dissimilarities have to be taken note of by the Court. It is the colour scheme and the overall effect of packaging, which needs to be seen. Mere dissimilarities are to be disregarded and cannot disentitle the plaintiff from an injunction. Even if there is a slightest case that any similarity in the mark or packaging is likely to cause confusion, such use of a mark has to be restrained. It is the overall get up and similarity which has to be seen and not the dissimilarities which distinguish, when an ordinary person recollects an object seen in the past. He states that the defendant had been restrained from using the mark “GAI CHAAP” and „COW device by an order dated January 12, 2018 in M/s. Radha Kishan Gobind Ram (supra) on identical set of facts. In this regard, he relies on the following:

(i) Heinz Italia v. Dabur India Ltd., VI (2007) SLT 612=(2007) 6 SCC 1;

(ii) Devagiri Farms v. Sanjay Kapur, 2016 (DLT SOFT) 70 (DB)=FAO(OS) 247/2014, dated February 01, 2016;

(iii) M/s. Radha Kishan Gobind Ram (supra)

16. It is the argument of Mr. Bakhru that the defendant in this case has copied the defences of RKGR as made by it in CS(COMM) 51/2018, wherein RKGR has challenged the family settlement dated September 13, 2004. This defence Mr. Bakhru states has been mirrored by the defendant herein, who is neither a part of the family nor party to the family settlement. He further states that the settlement arrived at between the defendant and RKGR dated February 19, 2018 was inter se between the parties and the clarification dated September 10, 2018 stated that the settlement was inter se between the defendant and RKGR. Later, RKGR itself had been injuncted vide order dated February 24, 2020 from using the trademark “GAI CHAAP” and “COW” device for spices. He places reliance on the KMB Foods Pvt. Ltd. v. Subhash Tayal & Anr., 267 (2020) DLT 483=CS(COMM) 51/2018, dated February 02, 2020.

17. The plaintiff has also contended that there has been no delay in filing the present suit. Mr. Bakhru has taken the argument that the defendant as per its own claim came into business of spices under its impugned mark in late 2017, thereafter it was injuncted on January 12, 2018. After which it came back with its impugned mark post the settlement with RKGR vide order February 19, 2018, which was subsequently clarified vide order dated September 10, 2018 wherein it was stated that the settlement was inter se the defendant and RKGR and did not affect the rights of the plaintiff. Once the plaintiff’s application seeking clarification of the order of the Division Bench was disposed of (on September 10, 2018), plaintiff proceeded to file the present suit in May, 2019. Mr. Bakhru has countered the argument advanced by the defendant that the suit suffers from delay and laches and that the plaintiff has acquiesced; by arguing that there should be tacit or an express assent by the plaintiff which is clearly absent in this case. Rather grant of injunction in this matter becomes necessary as prima facie it would appear that the adoption of the impugned mark by the defendant is dishonest. He has cited the judgments in the following cases in furtherance of his arguments:

(i) Midas Hygiene Industries P. Ltd. & Ors. v. Sudhir Bhatia & Ors., II (2004) SLT 627=(2004) 3 SCC 90;

(ii) Heinz Italia (Supra);

(iii) Pfizer Product Inc. v. Rajesh Chopra, 142 (2007) DLT 300; and

(iv) Make my trip (India) Private Limited v. Make My Travel (India) Private Limited, CS(COMM) 889/2018, dated October 18, 2019.

18. Mr. Bakhru has advanced the arguments that the plaintiff has filed the present suit with bona fides without making any misrepresentation. There have been no contradictory statements made by the plaintiff in the Trademark Registry affecting the present suit. He has opposed the argument of the defendant by contending that the defendant has focused a lot on the plaintiff’s application No. 2802285; wherein the use is claimed from the year 2013. He has argued that the plaintiff Co. is using the trademark “GAI CHAAP” and “COW” device from 1969 whereas the trademark applied for vide application No. 2802285 is the overall modified label containing the said marks, which the plaintiff intended to have separately registered. The plaintiff has attached the trademark documents to prove that the plaintiff had applied for the registration of its trademark “GAI CHAAP” and “COW” device in the year 1997 wherein the use is claimed since 1969. He has argued that the plaintiff has made a full disclosure of its trademark application in its plaint and that the arguments of the defendant in this regard are misplaced.

19. It has also been argued by Mr. Bakhru that the the defendant has falsely claimed that the assignment deed dated January 30, 2002 was not supplied to the Trademark Registry on time. This Mr. Bakhru argues, is false on the face of the record and has been explained in the replication. The Form TM 16 and replies from Trademark Registry which have been filed along with the suit prove that the plaintiff has filed the said assignment deed before the Trademark Registry. It is because of this assignment deed that these trademark applications bearing No. 748292 and 748285 applied in 1997 have been advertised on 18.01.2003 by the Trademark Registry, under the name of Plaintiff with user claimed since 1969. He has argued that the plaintiff is duly pursuing the aforesaid trademark applications.

20. He has stated that the balance of convenience is in favour of the plaintiff and the defendant has been already injuncted vide order dated January 12, 2018 on identical facts in M/s. Radha Kishan Gobind Ram (supra). It is his submission that the plaintiff is the prior user, with immense goodwill under the mark “GAI CHAAP” and “COW” device. Whereas the defendant is dishonestly imitating the plaintiff’s trade dress and trademark. It is his argument that the plaintiff will suffer irreparable loss, if the said injunction is not granted as the defendant will continue to make dishonest sales by tricking the consumers into believing that his products emanate from the plaintiff.

21. Mr. Bansal learned Counsel appearing on behalf of the defendant has stated that the defendant through his predecessor i.e. his father has been engaged in the business of manufacturing, processing and marketing of spices since a long time. The defendant adopted and started using the trademark/label Image Omitted“GCMC” with “COW” device in relation to the said goods and business in April 2017 and the said trademark has been duly registered under No. 3531286 in class 30 under the TM Act. The artwork involved in the said trademark/label i.e. “GCMC” with “COW” device is an original artwork created by Sachin Gupta (defendant herein) and the same is duly registered under the provisions of Copyright Act, 1957 under No. A-120153/2017 with effect from 13.09.2017. He argued that the defendant has all the requisite statutory licenses to carry on its said goods and business under the said trademark/label, moreover the defendant has substantial sales under the impugned trademark/label. In this regard, he has placed on record copies of invoices from the year 2017 along with supporting documents.

22. He has argued that the plaintiff claims to be the owner and proprietor of trademark “GAI CHAAP” and/or „KBM GAI CHAAP? along with “COW” device through its alleged predecessor Karol Bagh Masala Suppliers Company who allegedly has been using the same since 1969. Mr. Bansal argues that the plaintiff is not the registered owner of the aforesaid trademarks on the basis of which this suit has been filed.

23. It is his submission that the plaintiff has filed this suit after almost one and a half years after filing suit against RKGR though the plaintiff was aware of the defendant’s business under the subject matter trademark since 2017, being in the same line of business. He argues that the plaintiff has been standing by and hence acquiesced to the use of the mark by the defendant and additionally the suit is barred by delay and laches. He has argued that the defendant was first sued by RKGR vide CS(COMM) 28/2018 wherein ex-parte order of interim injunction dated January 12, 2018 was passed against the defendant. After which the plaintiff filed CS (COMM) 51/2018 against RKGR which was listed on January 24, 2018. The defendant had also filed a Caveat on January 25, 2018 since there was an apprehension of a suit being filed against him by the plaintiff. The plaintiff did not file a suit for a significant amount of time against the defendant.

24. The defendant filed an application under Order 39 Rule 4 CPC in CS (COMM) 28/2018 and got a limited relief vide order dated January 31, 2018. Facing hardship, defendant filed FAO (OS) (COMM) 31/2018. On February 19, 2018 the defendant and RKGR entered into a settlement and the defendant modified its business in terms of the settlement. Mr. Bansal has argued that the settlement was binding upon the parties, but even then, the plaintiff after considerable time chose to seek clarification which was given vide order dated September 09, 2018. The plaintiff filed the present suit which was listed for the first time on May 28, 2019. After the completion of pleadings the issues were framed on September 27, 2019 after which the matter was sent for trial.

25. Mr. Bansal argued that the competing marks in question are not deceptively similar and that the essential features of the defendant’s impugned trademark/label is “GCMC” and „Cow? device represented in an original artistic format which is quite distinct and different from the plaintiff’s “KBM” and “COW” device as represented in Trademark Application No. 2802285. He has pointed out that there is no vertical lining in the defendant’s trademark as in the case of plaintiff with respect to its trademark and trade dress. He has argued that yellow packaging for turmeric and red packaging for red chilli powder is a common feature for spices and that the other features of competing trademarks/labels are descriptive. He referred to the packaging of the defendant’s and the plaintiff’s product. Additionally, he also places reliance on the judgment in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, 1964 (SLT SOFT) 289=AIR 1965 SC 980 to state that the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

26. Mr. Bansal states, without admitting the plaintiff’s right in the word/mark “GAI CHAAP” the defendant in view of the settlement dated February 19, 2018 in FAO (OS) (COMM) 31/2018 with RKGR has discontinued the use of the word “GAI CHAAP”/“GAAY CHAAP”. He argues that even otherwise no one can claim exclusive right in the “COW” device, which when added with other distinctive features makes them different and distinguishable. In furtherance of this line of argument Mr. Bansal has relied on the registration of a trademark Image Omitted “GAI” written in vernacular along with a “COW” device, by a third party, being Shree Bhagwati Roller Flour Mills under No. 1264108 in class 30 claiming user since 1963; it is his argument that the trademark of the plaintiff, defendant and that of Shree Bhagwati Roller Flour Mills taken as a whole are different and distinguishable. There are also other entities using “COW” device in different formats for food articles without having any deception and confusion in the market hence no one can claim monopoly over the “COW” device in all formats. He went on to add that the cow has a significant cultural importance in India which has also been recognised in the Constitution. Furthermore, he argued, that the plaintiffs alleged predecessor filed application for registration of trademark vide application No. 748288 and the said application was allowed to be advertised before acceptance in the Trade Mark Journal “subject to association with application No. 748288 & disclaimer of device of Cow except as substantially shown on label” vide order dated October 30, 2002. The plaintiff did not pursue this application till this litigation started and the same was recorded as abandoned as per the record of the Trademark Registry.

27. Mr. Bansal has argued that the plaintiff by affixing the letter "R" on its trademark “KBM GAI CHAAP” as appearing on the packaging is committing an offence under Section 107 of the TM Act, and that this amounts to misrepresentation by the plaintiff of its trademark as registered, among consumers and trade. In this regard the defendant has relied on the following judgments:

(i) Sagar Bidi Works v. Bharat Bidi Works, 1981 (1) PTC 269 (Bom);

(ii) Raghubir Singh Jain v. Riazuddin Gyasuddin, 1996 (2) ArbLR 87 (Del);

(iii) K.B. Hiralal v. Kumar Industries, 1985 (5) PTC 222 (Del).

28. According to him, the plaintiff in para 18 of the plaint has made a false submission that the sales figures, are of sales arising out of the sale of spices under the trademark “GAI CHAAP” and “COW” device; as the Chartered Accountant Certificate with respect to sales and advertisements expenses is of the overall sales and sales promotion expenses and not of the particular trademark “GAI CHAAP” and “COW” device. He states that the plaintiff has registered trademark “KBM” for spices which they have been using since 2002.

29. He argued that the family settlement dated September 13, 2004 upon which the plaintiff relies as well as the Assignment deed dated January 30, 2002 are forged and dubious. The plaintiff Co. was incorporated on November 21, 2001 with the object to take over the running business of Karol Bagh Masala Company. The Agreement of succession of business dated January 23, 2002 mentions that the partnership firm will be succeeded by the Company with effect from January 23, 2002 and the Deed of Dissolution is dated January 23, 2002. He argues that whether a firm which has been dissolved and taken over by the company on January 23, 2002 can assign the trademark vide Assignment Deed dated January 30, 2002. He further argued that the pages of the calendar of the year 2010 onward are fabricated documents for the present suit, as admittedly plaintiff started use of the label advertised in the year 2013 as per application No. 2802285.

30. It is the case of the defendant, that the vide alleged Assignment Deed dated January 30, 2002, trademark applications bearing numbers 748302, 748288, 748303, 748285 and 748293 were assigned to the plaintiff company by the predecessor firm. These applications were filed in the year 1997, plaintiff discontinued the use of the alleged assigned trademark and did not pursue the applications assigned. The defendant submitted the online record of the Trademark Registry as available on https://ipindiaonline.gov.in/and their status is as under:

Table Omitted

31. Mr. Bansal has argued that the plaintiff in the abovementioned trademark application No. 748288 had filed amendment application on Form TM-16 as on January 30, 2002 to amend the name of the applicant as plaintiff company which was allowed vide order dated October 30, 2002 and the application was ordered to be advertised before acceptance in the Trade Mark Journal „subject to association with application No. 748285 and disclaimer of device of COW except as substantially shown on label?. He argued that the plaintiff concealed this condition and disclaimer.

32. Mr. Bansal contends that the plaintiff as a company for the first time filed application for registration of trademark on February 04, 2010 and thereafter in the year 2014 and then in the year 2015, with different claims of user. He has submitted the details of relevant applications as under:

Table Omitted

Flour Mills Pvt. Ltd. vide order

dated 3.4.2018

33. According to him Plaintiff has claimed false user since 1969 of the trademark Logo applied under No. 1916439 in Class 30. The same is under opposition by Bhagwati Flour Mills pvt. Ltd. Plaintiff used the trademark “KBM” after incorporation and claimed false user with respect to subject matter label applied under No. 2802285 and 2825932.

34. It is the case of Mr.Bansal that Shree Bhagwati Flour and Foods Pvt. Ltd. is a prior user and registered proprietor of the trademark/label “GAAY” under Nos. 646657, 1054318, 1264092, 1264108, 1264105, 1264107 for spices claiming user since 1963 and has filed opposition to the plaintiff’s trademark applications as mentioned above. That RKGR in CS (COMM) 51/2018 has denied the alleged Family Settlement dated September 13, 2004, according to which the Plaintiff was assigned to use the trademark “GAI CHAAP” with respect to spices. RKGR was assigned to use the trademark “GAI CHAAP” with respect to Mustard Oil and M/s. ISCON Global Pvt. Ltd. was assigned to use the trademark “GAI CHAAP” with respect to Besan and Chana Dal. He argues, even on the assumption of the existence of the alleged family settlement, the same was not given effect to and none of the signatories followed the said settlement. He refers to the trademark applications bearing Nos 1825932 and 2988321 in class 29 being against the family settlement.

35. He argues that an examination report was issued by the Trademark Registry in the plaintiff’s application under No. 2802285 in class 30 on October 20, 2015, citing application under No. 748285 in class 30 in the name of Om Prakash Agarwal for the mark “GAI CHAAP”. Mr. Bansal proceeded to argue that the plaintiff filed two replies dated February 16, 2016 and August 08, 2017 to the said examination report, he stated that if it were to be assumed that the Deed of Assignment was in existence, then the usual response to the said cited mark should have been that the cited mark 748285 belongs to the applicant by virtue of assignment. However, in both the replies to the examination report, neither the Deed of Assignment nor the Family Settlement finds mention. Furthermore, the plaintiff has submitted that the registration of cited mark under application No. 748285 is still pending. Moreover, the plaintiff/applicant before Trademark Registry has submitted that the other cited marks under No. 1600044 and 1916440 belong to the plaintiff, which is the trademark „KBM?. This reply, Mr. Bansal states was concealed by the plaintiff and cannot contradict the stand taken in the reply, this factum alone should be enough to disentitle the plaintiff from any discretionary relief.

36. Mr. Bansal states that it is significant to note that there is no mention of either the Family Settlement or the Deed of Assignment in the affidavit of usage of Trademark dated November 17, 2018 in respect of the Application under No. 2802285. According to him, the plaintiff then filed a TM-M dated December 04, 2018 for bringing on record the Deed of Assignment dated January 30, 2002 in respect of the trademark application under No. 748285. It is submitted that the plaintiff had failed to bring on record of the Trade Marks Office the factum of aforesaid Deed of Assignment for over a period of 16 years.

37. According to him, the plaintiff had also filed an opposition under No. 907211 on November 08, 2017 against the trademark application under No. 3571699 in class 30 in respect of “Lal Mirch Powder (Red Chili powder)” in the name of RKGR. As per the Family settlement the plaintiff had been exclusively assigned the Trademark “GAI CHAAP” in respect of spices and the applicant (RKGR) was assigned the same with respect to mustard oil. In the said opposition, the plaintiff has detailed the whole history of family business starting from 1969 but failed to mention the alleged Family Settlement dated September 13, 2004.

38. It is the case of Mr. Bansal that the plaintiff, in the plaint and the interim injunction application, has deliberately concealed the material fact of the disclaimer in its trademark application No. 2802285 in class 30 for registration of trademark/label, which is reproduced below:

Image Omitted

“THIS IS SUBJECT TO ASSOCIATION WITH REGISTERED/PENDING REGISTRATION NO. 1600044, 1916440. MARK SHOULD BE READ AND USE AS A WHOLE”

According to Mr. Bansal, both the numbers 1600044 and 1916440 are with respect to the plaintiff’s registered trademark „KBM? filed in the year 2007 and 2010 respectively with claim of user since 2002. Supression of this factum, disentitles the plaintiff from any discretionary relief. In this regard he has drawn my attention to the following judgments:

(i) Shri Ram Education Trust v. SRF Foundation & Anr., 2016 SCC Online Del 472;

(ii) Suresh Kumar Jain v. Union of India & Anr., 2012 (49) PTC 287 (Del) (DB);

(iii) Mankind Pharma Ltd. v. Chandra Mani Tiwari & Ors., 253 (2018) DLT 39=MANU/DE/2363/2018;

(iv) Keller William Reality Inc. v. Single Buildcons Pvt. Ltd., CS (COMM) 74/2019, dated November 22, 2019.

39. It is the case of the defendant and so argued by Mr. Bansal that the plaintiff has failed to prove its goodwill in the subject matter trademark, as it abandoned the trademark allegedly used by its predecessor firm. As the plaintiff used the trademark “KBM” since incorporation and in the year 2014 adopted the trademark/label Image Omitted for which it filed an application for registration under No. 2802285 in class 30 on September 14, 2014 claiming false user since April 01, 2013. Total of 10 invoices filed for the period April 01, 2013 till December 31, 2017, at best mention the trademark as reproduced below:

Image Omitted

40. He further argues that the document filed by the plaintiff relating to Central Sales Tax Registration, Directorate of Marketing and Inspection regarding Agmark, although mention “COW BRAND” or “GAI CHAAP” this cannot be considered as document of use by the predecessor of the plaintiff in a case for passing off and even in a case of infringement of trademark. It is relevant to point out that said documents mentions “GAI CHHAP DEGI MIRCH”. It is stated that the “DEGI MIRCH GAI CHHAP” trademark application filed by the plaintiff under No. 748302 was abandoned as on September 21, 2015 in opposition by “MAHASHIAN DI HATTI (MDH)”. He argues that even otherwise the word mark “GAI CHHAP” is not used by the defendant.

41. It is the case of the defendant that even if it were to be assumed that plaintiff has a title over the impugned trademark (of the alleged predecessor) the sale invoices, so filed (of the alleged predecessor and of the plaintiff) reflect whole sale of spices in kilogram; and the same are mostly cash invoices and do not mention the trademark under which the goods were sold under particulars of goods sold. Hence the invoices filed cannot be treated as documents in support of use of the subject matter trademark. In this regard he relies on the judgment in the case of Jain Electronics v. Cobra Cables (P) Ltd., 2011 (45) PTC 52 (Del).

42. Mr. Bansal states, that the sketch of cow with word “GAI CHAAP” written in a miniscule form in device format is embossed on the invoices (in following format) in the sequence of period which has been reproduced below:

Table Omitted

43. He argued, the first format was abandoned in the year 1997. The second format allegedly adopted in the year 1997 (in above mentioned) application No. 748288 was left in the year 2006 and the third format is under opposition as under application No. 1916439.

44. Mr. Bansal while denying the invoices and advertisements, pertaining to the alleged predecessor and that of the plaintiff, argued that the plaintiff has filed six advertisements of the year 1997 in Aman Vyapar and thereafter of the year 2018-2019. Even the pages of the calendar of the year 2010 onwards are created for the present suit, as admittedly plaintiff started use of the label advertised in the year 2013 as per application No. 2802285. Whereas the other alleged advertisements don?t specify the time.

45. He contends that the onus is upon the plaintiff to get interim injunction in a passing off action which the plaintiff has failed to discharge. According to Mr. Bansal, the plaintiff has failed to establish its title in the trademark “GAI CHAAP” and/or “KBM GAI CHAAP” as till date no trademark is registered in favour of the plaintiff for spices, despite filing several applications. His “COWCHHAP” trademark applied under No. 2988316 has been abandoned on opposition by Shri Bhagwati Flour Mills Pvt. Ltd. vide order dated April 03, 2018, which they concealed and the trademark format applied under Application No. 1916439 Image Omitted which plaintiff currently uses on its invoice is also under opposition by Shri Bhagwati Flour Mills Pvt. Ltd. who claims the use of trademark “GAI CHAAP” with “COW” device since 1963. The current format of trademark allegedly in use i.e. Image Omitted applied under application No. 2802285 has been objected to by the Trademark Registry by issuing an examination report, reply to which is as mentioned above.

46. In an action for passing off, the plaintiff has to establish its vast goodwill to allege passing off. According to Mr. Bansal the plaintiff has failed to establish its goodwill. Plaintiff has itself been using different formats of “COW” device with the word “GAI CHAAP” at different periods of time by abandoning the use of the previous one. Neither the old format nor the current formats of competing trademarks are identical or deceptively similar which can lead to misrepresentation. In furtherance of his arguments Mr. Bansal relies on the following judgments:

(i) American Home Products Corporation v. Mac Laboratories Pvt. Ltd., 1985 (SLT SOFT) 109=(1986) 1 SCC 465;

(ii) Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises, 163 (2009) DLT 209 (DB)=2009 (41) PTC 362 (Del) (DB);

(iii) Precious Jewels & Ors. v. Varun Gems, 197 (2013) DLT 337 (DB)=2013 (53) PTC 233 (Del) (DB);

(iv) Turning Point v. Turning Point Institute, 251 (2018) DLT 563 (DB)=2018 (75) PTC 417 (Del) (DB);

(v) Corn Products Refining Co. v. Shangrila Food Products Ltd., 1959 (SLT SOFT) 17=AIR 1960 SC 142.

47. Mr. Bansal has argued that the interim injunction passed in another case being CS (COMM) 51/2018 against RKGR with whom the defendant has settled the case before the Division Bench of this Court does not operate as res judicata. Firstly, the suit of RKGR against the present defendant was not decided on merit and, secondly plaintiff was not party in the said suit. Furthermore, as per the documents on record the case of RKGR was not presented properly before this Court. Mr. Bansal contends that there is no case of injunction that has been made out since the plaintiff has not approached the Court with clean hands; as the plaintiff has deliberately concealed material facts, made false statements. The plaintiff is not entitled to an equitable relief and hence this application for injunction is liable to be dismissed.

FINDINGS:

48. Having heard the learned Counsel for the parties and perused the record, the issue which arises for consideration in this application is whether the plaintiff is entitled to injunction against the defendant from manufacturing, marketing, selling, offering for sale the goods, i.e., spices by using the mark “GAI CHAAP” with “COW” device and other essential features of the label and trade dress of the plaintiff’s mark “KBM”, “GAI CHAAP” with “COW” device. In support of its case that it is the prior user of the “GAI CHAAP” with “COW” device, the plaintiff has relied upon various documents. Suffice to state, this Court in CS(COMM) 51/2018 filed by the plaintiff against one Subhash Tayal and Anr., has held that plaintiff has been using the mark “GAI CHAAP” with “COW” device for spices since 2004. So, proceeding on that premise and it is the case of defendant herein that he is using the mark “GCMC” with cow device since 2017, it is clear that the plaintiff is the prior user of the “COW” device in relation to spices and as a prior user, certain rights flow in favour of the plaintiff. I may state here that it is the case of the plaintiff that it has registration in the mark Image Omitted since 1969, through its predecessor-in-interest. In any case, the plaintiff’s case is also that it got the mark Image Omitted registered, through application No. 2802285 in the year 2013, which is also before 2017. The Supreme Court in the case of S. Syed Mohiden (supra) relied upon by Mr. Bakhru has in Para 31.2 held as under:

“31.2. The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark/name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off.”

49. So, from the above ratio it must be held that prior user generates goodwill first in the market and later user cannot misrepresent his business as that of the prior user/holder. Therefore, any goodwill generated by the defendant is because of the dishonest adoption of the impugned mark which is subsequent to the plaintiff’s adoption of the said mark. Mr. Bakhru is also justified in relying upon the judgments on similar proposition, in the case of N.R. Dongre (supra), Eicher Goodearth Pvt. Ltd. (supra), Century Traders (supra), M/s. Ropi Industries (supra). So also, a Coordinate Bench of this Court in the case of AZ Tech (India) & Ors. v. Intex Technologies (India) Ltd. & Ors., 236 (2017) DLT 220=2017 (70) PTC 118 (Del.) has held that in order to succeed in a case of passing of, the plaintiff must establish prior rights over the defendants (in that case) and went on to hold as under:

“77...... it is clear that in an action of passing off, prior user remains the ultimate test. This is subject to one exception being that a mere casual, intermittent or experimental use may be insufficient to sustain an action of passing off. This is so as the intention to adopt the mark as a trade mark may not be established to sustain a priority claim. This is what led to the Supreme Court in Uniply Industries Ltd. (supra) observing that "on some other occasions Courts have classified small sales volume as so small and inconsequential for priority purposes." Accordingly, for establishing priority at an interim stage it may not be necessary to show substantial sales or advertisements but, at the same time, sufficient enough for the Courts to come to a strong prima facie opinion that there was a clear intention to adopt the mark for the particular goods.”

(Emphasis supplied)

50. The case of the defendant is that he got the mark “GCMC” with “COW” device registered vide the trade mark application No. 3531286 on April 02, 2017. In this regard, Mr. Bakhru’s plea was that the registration has been obtained by fraud against which the plaintiff has already filed a rectification application. That apart, it is the case of the plaintiff in the suit that the defendant has the mark “COW” device with similar get up/trade dress with regard to identical goods, i.e., spices. To understand the issue, it is necessary to reproduce the packaging of the spices manufactured/sold by both the parties as under:

Plaintiff's products

Image Omitted

Defendant's products

Image Omitted

Image Omitted

51. It is a settled position of law that passing off is a broader remedy than that of infringement as held by the Supreme Court in the case of S. Syed Mohiden (supra). The passing off doctrine operates on the general principle that no person is entitled to represent his business as that of another and as such action of passing off is maintainable for diverse reasons than that of registered rights. The Supreme Court also held that registration is no defence to passing off action and the TM Act affords no bar to a passing off action.

52. This Court in Century Traders (supra) has held that the registration merely recognizes the rights which are already pre-existing in common law and does not create any new rights. Similar is the position of law held by the High Court in N.R. Dongre (supra) vide Para 31 which I reproduce as under:

“31. A reading of Section 28(3) with Section 30(1)(d) shows that the proprietor of a registered trade mark cannot file an infringement action against a proprietor of an identical or a similar trade mark. While Sections 28(3) and 30(1)(d) on the one hand deal with the rights of reigstered proprietors of identical trade mark and bar action of infringement against each other, Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new right on the proprietor thereof than what already existed at common law without registration of the mark. The right of goodwill and reputation in a trade mark was recognised at common law even before it was subject of statutory law. Prior to codification of trade mark law there was no provision in India for registration of a trade mark. The right in a trade mark was acquired only by use thereof. This right has not been affected by the Act and is preserved and recognised by Sections 27(2) and 33.”

(Emphasis supplied)

53. To consider the plea of passing off by the plaintiff, it must be shown that the disputed mark with get up, as used by the defendant is not distinctive from that of the plaintiff’s. So, that the use of the disputed mark with get up in relation to similar goods such as the kind dealt by the plaintiff with that mark with get up, will be understood by the customers as the goods of the plaintiff. For establishing passing off it is necessary to prove the goodwill, misrepresentation and likelihood of damage to the plaintiff.

54. In the plaint it is the case of the plaintiff that the mark and get up of the packaging of the defendant when compared to that of the plaintiff, is completely identical, which could not have been achieved without copying and it is bound to cause confusion in the mind of general public, most of whom are average consumers having imperfect memory and recollection.

55. In support of his submission that the mark of the plaintiff i.e., “GAI CHAAP” with the “COW” device has achieved goodwill, Mr. Bakhru has relied upon the documents as listed in paragraph 11 above. It is a settled law to establish goodwill prima facie reliance can be placed on promotional expenses/turnover and the sales figures. According to Mr. Bakhru, as per the certificate issued by the Chartered Accountant of the plaintiff, the gross turnover of the plaintiff company for the year ending March 31, 2018 was Rs. 88.75 Crores. Even the promotional expenses in the year 2016-17 was Rs. 8,02,298/-. Whether the plaintiff has achieved goodwill/reputation on the basis of the aforesaid figures is subject matter of trial. The law in this regard is well settled by the judgment of this Court in the case of Intex Technologies (India) Ltd. and Ors. (supra) wherein in Para 18 the Court had held "it is also evident that insofar as a registered trade mark is concerned, the property exists in the mark, but in the case of passing off, the property is not in the mark but in the goodwill. The establishment of goodwill is indicated by the extent of sales and the advertising expenses etc.". Hence, goodwill and reputation is ascertained through the sale figures, advertisements and promotional expenses along with continuous use as opposed to irregular use of the mark since adoption. At this stage, when the interim application is being decided, I am unable to agree with the argument advanced by Mr. Bansal, who has questioned the veracity of the sales made by the plaintiff, in view of the finding in CS (COMM) 51/2018 that the plaintiff is the prior user and also, the veracity of the sales made by the plaintiff is a disputed question of fact to be decided, after the evidence is led in the trial.

56. On the aspect of possible deception is concerned, on a comparison of packaging of spices manufactured/sold by the parties which I have reproduced above, it is noted that the colour combination of the packaging is red with respect to chilli powder and yellow with respect to turmeric powder. The depiction of “GCMC” by the defendant is with a similar background as that of the plaintiff i.e., the alphabets “GCMC” are written in white colour with black background. There is even a depiction of a “COW” device on the top right corner of the packaging, which is similar to the one of the plaintiff. Further. the name on the packet i.e. turmeric powder/chilli powder are represented in devanagri script with the word “Special“ written in a similar font and colour in devanagri script. Even the back side of the packaging is similar to that of the plaintiff. The distinguishing feature highlighted by Mr. Bansal is primarily the vertical lines on the packing of the plaintiff.

57. I find that the vertical lines are very thin in size and are not material to distinguish the product of the plaintiff from that of the defendant. What is relevant is over all getup of the packaging with “COW” device which I am of the view that is deceptively similar/identical to that of the plaintiff’s.

58. Mr. Bansal has relied upon the judgment in the case of Kaviraj Pandit Durga Dutt Sharma (supra) to state that the defendant may escape liability if he can show that the added material is sufficient to prove the difference. As stated above, the colour combination/get up with “COW” device if compared holistically with that of the plaintiff’s, there is no distinguishing feature.

59. Even the plea of Mr. Bansal that every aspect of the packaging except the vertical lines/colour are descriptive in nature and the plaintiff cannot have a monopoly/exclusive right over the same is concerned, suffice would it be to state that Mr. Bansal cannot take the defence of descriptiveness on behalf of the defendant when it is a conceded case that the defendant had also applied for registration of mark “GCMC” with “COW” device and got the registration as well. Had the mark and the words turmeric powder/chilli powder including the one in the devanagri script, along with “COW” device been descriptive, the defendant would not have been able to got the same registered. In this regard, I may refer to the judgment relied upon by Mr. Bakhru, in the cases of Millennium Hotels (supra) and Jiva Institute (supra), wherein in Para 40, it has been held as under:

“40. It was next argued by Mr. Rohtagi that the word 'JIVA' is a descriptive word which cannot be protected as a trade mark by a Civil Court. We do not think so, the appellant has itself applied for registration of the Jiva as a trade mark and cannot, Therefore, argue that the mark is descriptive. In Automatic Electric Limited. v. R.K. Dhawan and Anr., 1999 PTC (91) 81 this Court has in similar circumstances repelled the contention and held that since the defendant had itself sought to claim a proprietary right and monopoly in "DIMMER DOT", the disputed trade mark it did not lie in its mouth to say that the said mark was a generic expression. The Court observed:

16. The defendants got their trade mark "DIMMER DOT" registered in Australia. The fact that the defendant itself has sought to claim trade proprietary right and monopoly in "DIMMER DOT" is a generic expression.”

(Emphasis supplied)

60. Insofar as the third component of likelihood of damages being caused to the plaintiff is concerned, I may state that the use of an identical mark by the defendant for identical goods with identical packaging/trade dress is no doubt bound to create confusion in the mind of the average consumer and increases the likelihood of injury to goodwill, reputation and business of the plaintiff. At this stage, when the Court is forming a prima facie view actual damages need not be proved [Reference: Laxmikant V. Patel v. Chetanbhai Shah & Anr., VIII (2001) SLT 284=(2002) 3 SCC 65 and Turning Point Institute Pvt. Ltd. (supra)]. I may also reproduce the relevant portion of the judgment in the case of Century Traders (supra) which also sums up the position of law in this regard:

“21. We now come to the question of balance of convenience. It has been urged on behalf of the respondents that the mark "RAJARANI" is common to the trade and for this purpose reliance has been placed on the registration in Andhra Pradesh and Amritsar. There is a distinction between a mark being "common on the register" and "common to the trade". There is no evidence on record to show that there is actual user of this mark by any party other than the parties before us. Inasmuch as trade mark is property right, an invasion of it should be protected and the balance of convenience would obviously be in favour of the appellant who was admittedly the first user of this mark. We cannot accept that there is any prima facie evidence of respondent No. 3 being the owner of the mark. Indeed, this is belied by the registration applications filed by respondent No. 2. As was observed by Goddard, L.J. in Draper v. Trist, 1939 (3) A.E.R. 513 (8):

“In passing off cases, however, the true basis of the action is that the passing off by the defendant of his goods as the goods of the plaintiff injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business......”

22. We now come to the question of irreparable injury. It is said that there is nothing on the record to show that any loss has been occasioned to the appellant and, in any case, the respondents can be ordered to keep accounts. We do not agree. The irreparable injury would be the likely confusion that may be caused if respondents are allowed to use the mark which we have held prima facie as being the mark of the appellant. It will take some time before the suit is decided. If the respondents are not restrained by means of an interim injunction they would continue to market their goods with the offending mark. That ultimately might be held to be long user and the ultimate relief of permanent injunction may be refused on the plea of common or concurrent user. At the moment no plea of common or concurrent user has been raised by the respondents but there is nothing to prevent them from doing so in future if they are allowed to use the trade mark for the duration of the pendency of the suit. The likelihood of confusion being caused and the likelihood of the plea of common or concurrent user being raised by a later stage would be the irreparable injury to the appellant.”

(Emphasis supplied)

61. It is the case of the defendant that the use of the impugned mark is honest and concurrent since the impugned mark is descriptive is prima facie not appealing in view of my conclusion above.

62. The Judgme

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nts relied upon by Mr. Bansal in the cases of Sagar Bidi (supra), Raghubir Singh Jain (supra) & K.B. Hiralal (supra) to state that the plaintiff has committed an offence under Section 107 of the TM Act. These judgments, in view of the findings given above would not aid the case of the defendant. This argument has been taken at a belated stage by the defendant, only when the suit has been brought against him by the plaintiff. Since this argument has been taken as a defence by the defendant, the onus is upon the defendant to show his bona fides and that he had taken necessary steps under Section 115 of the TM Act; when he got to know of such misrepresentation. Surely, he would not wait for the plaintiff to bring a suit against him to state so. This responsibility has not been fulfilled by the defendant. Hence this defence is liable to be rejected. 63. Further reliance has been placed on the judgments of Shri Ram Education Trust (supra), Suresh Kumar Jain (supra), Mankind Pharma Ltd. (supra) & Keller William Reality Inc. (supra); to contend that the plaintiff has concealed the disclaimer (reproduced at Para 38) subject to which registration was granted. This Court is unable to agree with plea so advanced in this regard in terms of the findings above. This issue cannot be gone into by this Court at this stage. Needless to say, that this issue would be a subject matter of trial. 64. Mr. Bansal, has also relied on the judgements of Jain Electronic (supra), American Home Products Corporation (supra), Pioneer Nuts and Bolts Pvt. Ltd. (supra), Precious Jewels & Anr. (supra), Corn Products Refinning Co. (supra), and Turning Point and Anr. (supra) to state that the plaintiff has failed to establish goodwill and reputation. As per the findings given above, these judgements would not provide succour to the case of the defendant since the plaintiff is the prior user and the adoption of the impugned mark by the defendant is prima facie dishonest. I may even state that the judgment in the case of Turning Point and Anr. (supra) supports the case of the plaintiff and the relevant paragraphs are reproduced hereunder: 12. "Passing off" is, therefore, a specie of unfair trade competition, in which one person seeks to pass of his goods, or services, as those of another, by using the trademark, or name, of the letter, or a mark, or name, which is deceptively similar to that of the latter. It is an act calculated to lead to deception, aimed at obtaining an economic benefit, by capitalising on the reputation and goodwill amassed by the other person over a period of time. It is regarded as an action for deceit. In order to succeed in a "passing off" action, the plaintiff has necessarily to establish, apart from prior user of the trademark or name in question, the "trinity" of misrepresentation (deliberate or otherwise), goodwill and damage. Relief, in a passing off action, is always against the later user of the mark, or name, and never against the prior user thereof. 13. Establishment of the existence of "goodwill", as an ingredient to sustain an action for passing off, necessarily requires the plaintiff to demonstrate that the trade name, or mark has become so closely associated with his goods, or services, as to acquire a secondary meaning, specifically relatable to the goods or services of which he, and he alone, is the source. "Goodwill" has to be established by proving that the public associates the name, or mark, with the goods or services provided by the person bringing the action of passing off. "Reputation" is different, and distinct, from "goodwill". "Goodwill" would have to be established by referring to an existing customer base, sales and advertisement. The length of user is not strictly relevant, where the question of goodwill is involved. 14. In cases where the area of activity of the plaintiff and the defendant is the same, and the mark or name adopted by them similar, the only question required to be examined, in order to assess whether a case of "passing off" is, or is not, made out, is that of prior user.” (Emphasis supplied) 65. On the issue of delay in filing this suit is concerned, the law is well settled and has been summed up in the case of Midas Hygiene Industries (supra) wherein it has been held as under: “5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.” 66. It is trite law that at this stage, the Court is not to conduct a mini trial. It has to form only a prima facie view as has been held in the case of Advance Magazine Publishers Inc. v. Bombay Rayon Fashions Ltd. & Ors., 242 (2017) DLT 722=2017 SCC Online Del 100064. 67. In view of the discussions above the plaintiff has made out a prima facie case in its favour, even the balance of convenience is in favour of the plaintiff and irreparable loss shall be caused, if the interim order as prayed for is not granted. Accordingly, the I.A.7965/2019 of the plaintiff filed under Order 39 Rule 1 & 2 CPC is allowed, and a restraint order is passed till the disposal of the suit, against the defendant, its principal officers, family members, servants, agents, dealers, distributors, retailers and/or anyone acting for and on his behalf from manufacturing, marketing, selling, offering for sale or advertising its goods i.e. spices by using the mark “GAI CHAAP”, “COW” device and the other essential features of the label and trade dress of the plaintiff either in isolation or in conjunction with each other and thereby causing confusion and deception in the course of trade and thereby passing off defendant’s goods as that of the plaintiff’s. Before parting with the case, I may state that the aforesaid is a prima facie view and is not an expression on the merits of the suit. 68. The application is disposed of.
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