IA Nos. 2317& 4741/2019
Jayant Nath, J.
1. This suit is filed for permanent injunction, infringement and passing off trademark, copyright, unfair competition, rendition of accounts, dilution, delivery up, damages etc.
2. IA No. 2317/2019 is filed under Order 39 Rules 1 and 2, CPC seeking ex parte injunction to restrain the defendant from using the trademark/trade name LADLI/SHUDH LADLI or any other mark/name, which is identical or deceptively/confusingly similar to the plaintiff’s trademark LADLI/SABKI LADLI for the goods i.e. rice and pulses etc. included in class 30 or other similar goods in any manner whatsoever. Other connected reliefs are also sought.
3. The above matter came up before this Court on 14.2.2019. This Court till further orders restrained the defendant etc. from using the trademark/trade name LADLI/SHUDH LADLI or any other mark/name, which is identical or deceptively/confusingly similar to the plaintiff‘s trademark LADLI/SABKI LADLI for the goods i.e. rice and pulses etc. included in class 30 or other similar goods in any manner whatsoever.
4. Thereafter, the defendant has filed IA No. 4741/2019 under Order 39 Rule 4, CPC seeking vacation of the said ex parte interim stay passed by this Court on 14.2.2019.
5. In the plaint, it is stated that the plaintiff is a partnership firm. It is stated that Smt. Laxmi Pareek, erstwhile proprietor of M/s Laxmi Agro Impex India, plaintiff adopted the mark LADLI/SABKI LADLI and started using the said trademark since 1.4.2006. She applied for registration of the said mark in class 30 for rice and pulses claiming user since 1.4.2006. The trademark SABKI LADLI was registered in class 30. Subsequently, the said M/s Laxmi Agro Impex India was converted into a partnership firm. The said firm acquired the trademark LADLI/SABKI LADLI(L) from its partners. It is stated that the plaintiff has conceived and bona fidely adopted the trademark/lable LADLI/SABKI LADLI as well as artistic work through its predecessor in 2006. It is further stated that the said trademark/label of the plaintiff has acquired secondary meaning in the eyes of the customers and general public. The trademark/label is distinctive of the said goods processed and sold by the plaintiff. The annual sales figure of the plaintiff’s firm for the financial years 2010-2011 to 2017-2018 are mentioned in para 13 of the plaint. For the financial year 2017-2018, the plaintiff is said to have an annual sales of Rs. 1,14,13,19,704.08. The selected sales bills/invoices are placed on record.
6. Regarding the defendant, it is stated that the plaintiff came to know through market sources regarding use of identical/deceptively similar trademark/trade name/artistic work LADLI/SHUDH LADLI by the defendant in the first week of October 2018. The plaintiff has sent a legal notice on 9.10.2018 calling upon the defendant to stop processing and marketing the impugned goods bearing trademark LADLI/SHUDH LADLI. However, no reply was received. It is stated that it came to the knowledge of the plaintiff that the defendant again started the use of the impugned trademark/trade name on a very large scale in a different part of the country including Delhi.
7. It is stated that the defendant has adopted a deceptively and confusingly, similar trademark/trade name LADLI/SHUDH LADLI with ulterior motives. The trademark/trade name LADLI/SHUDH LADLI is deceptively similar to the mark LADLI/SABKI LADLI of the plaintiff. It is stated that a comparative analysis of the defendant’s mark LADLI/SHUDH LADLI and the plaintiff’s mark LADLI/SABKI LADLI clearly sets out a case of likelihood of confusion. A mere cursory glance at the packing of the defendant’s products clearly reveals that it is intended at causing confusion that the products emanate from the plaintiff. An analysis of the products of the plaintiff and the defendant clearly show the degree of resemblance of the products. The plaint gives a tabular comparison of the two trademarks, which are as under:
8. The defendant has filed a written statement. It is stated that the business of the defendant was started in the year 1990 by the family members adopting the logo ‘Best’, which is duly registered in class 30. ‘Ladli’ was adopted as sub mark in the year 1993. The family business was converted into the partnership firm in the name of Best Food International in the year 1997. In the year 2003, Best Food International Pvt. Ltd was incorporated and the business of partnership firm was taken over by the said company. The said company is now known as Best Food Pvt. Ltd. It is stated that label mark Ladli with mother and daughter photograph was conceived and developed in 2009 by one Jagpal Jindal for the predecessor of the defendant. Mr.Raghubir Pareek, an ex-employee fraudulently and deceitfully made an application for registration of the trademark ‘Sabki Ladli’ with mother daughter photograph on 24.12.2009 with the designed photograph as got developed by the predecessor of the defendant in the name of his wife Smt. Laxmi Pareek (erstwhile proprietor of the plaintiff) showing the user since 1.4.2006. Sh.Raghubir Pareek was working as Manager in Suresh Kumar & Sons being part of Best Group in the year 2009-2010. It is stated that the word ‘Ladli’ is consistently used by the defendant without any interruption to the knowledge of the plaintiff since 1993 and word Ladli with the mother daughter photograph since 2009. It is stated that the defendant was not aware that the plaintiff has committed a fraud and had applied for the trademark ‘Sabki Ladli’ with the photograph, which was designed by the predecessor of the defendant. It is stated that the trademark Ladli was assigned to Sh.Sumit vide Assignment Deed dated 14.12.2017. The defendant has been selling different types of their rice in the name of Ladli.
9. It is further stated that the plaintiff has not used Ladli as a word mark or as a device prior to 2017. It is denied that the plaintiff is the prior user since 2006. It is stated that the case of the plaintiff is based on fabricated and created documents, which is apparent from the face of record and, which do not inspire confidence. There are no documents produced from 2006 till 2008. There are some cash receipts of 2008 which have calculation error. It is stated that it is only from 2017, the bills of the plaintiff include sale of Ladli. There is nothing on record to show that the said word mark or label mark was being used prior to 2017 by the plaintiff.
10. I have heard the learned Senior Counsel appearing for the parties.
11. The learned Senior Counsel appearing for the defendant has pleaded that the defendant without prejudice to the rights and contentions has proposed to use the following mark:
12. It is stated that this is only for the purpose of present proceedings relating to interim order passed by this Court. It is stated that the claim of the defendant on the original label mark may/should be adjudicated in the course of hearing of the suit but during the pendency of the suit the defendant will only use the aforenoted marks. It is stated that the trade mark now proposed to be used by the defendant is not deceptively similar to the trade mark of the plaintiff. It is further stated that the trademark which has been applied for the plaintiff is lying under objection of the Trademark Registry. It is stated that ‘Ladli’ is used by many people for rice and pulses. It is further pleaded that the plaintiff documents at best show user since 2017 whereas the user of defendant is since 1993.
13. The learned Senior Counsel appearing for the plaintiff has pleaded that the assignment deed relied upon by the defendant is a fraudulent document only for the purpose of claiming user since 1993. It is stated that the legal notice was sent to the defendant on 5.6.2008. A reply was received from the defendant on 14.6.2008 whereas there is no reference to the assignment deed. It is further stated that proceedings against Best Food Pvt. Ltd. are pending before NCLT and an IRP was appointed in February 2018. However, to overcome the aforesaid issue, a back dated assignment deed of the trademark has been manufactured by the defendant. The assignment deed is on a stamp paper of February 2016 whereas the assignment deed is of December 2017. The defendant has no rights as the trademark being an asset of Best Food Pvt. Ltd. is subject to the direction of NCLT/IRP.
14. The issue is within a narrow compass in view of the submissions made by the learned Senior Counsel for the defendant that for the purpose of adjudication of these applications, they will use the trade mark as reproduced in para 11 above. The issue would be as to whether the same in any manner can be said to be deceptively similar to the mark of the plaintiff.
15. In the above context, reference may also be had to the judgment of the Supreme Court in the case of Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and Others, VI (2006) SLT 673=(2006) 8 SCC 726, held as follows:
“91. Although the defendant may not be using the actual trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing-off could be proved. It is also possible that the defendant may be using the plaintiff's mark, the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception to the public. However, in an infringement action, an injunction would be issued if it is proved that the defendant is improperly using the plaintiff's mark. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. The test, therefore, is as to likelihood of confusion or deception arising from similarity of marks, and is the same both in infringement and passing-off actions. [See Ruston & Hornsby Ltd. v. Zamindara Engg. Co., (1969) 2 SCC 727]”
16. Similarly, the learned Single Judge of this Court in Stiefel Laboratories, Inc. &Anr. v. Ajanta Pharma Ltd., 211 (2014) DLT 296=2014 (59) PTC 24 (Del.) held as follows:
“29. In the case of Indian Hotels Company Limited v. Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 1.5.2014), I had the occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks:
(i) Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit DurgaDutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980;
(ii) Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. American Home Products v. Mac Laboratories, AIR 1986 SC 137;
(iii) If the essential features of the trademark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. American Home Products v. Mac Laboratories, AIR 1986 SC 137.
(vii)Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. and Anr., AIR 1970 SC 146;
(viii) The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the surrounding circumstances must be considered. Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449;
(ix)Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. Kehsav Kumar Aggarwal v. M/s. NUT Ltd., 199 (2013) DLT 242;
(x) Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449;
(xi)Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences in the design and get up…”
17. From the aforementioned judgments it is clear that the rival marks have to be compared as a whole. The marks are not to be placed side by side to find out if t
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here are material differences in design and get up rather, the two marks have to be compared keeping in mind an unwary purchaser of an average intelligence and imperfect recollection. In the present scenario the mark of the parties are label marks. The mark of the plaintiff is as follows: “Image omitted” 18. The proposed mark of the defendant for use during pendency of the present suit is as follows: 19. A perusal of the proposed trade mark by the defendant would show that there is material difference in the two marks. The get up proposed to be adopted by the defendant is markedly different from the get up of the trade mark of the plaintiff. The essential features are materially different. An unwary purchaser of average intelligence is unlikely to get confused on a perusal of the said two trademarks. In my opinion, without going into the merits and demerits of the rights of the parties on the original mark, it would be in the interest of justice that the defendant is permitted to use the proposed trade mark till the pendency of the present suit subject to further orders in the suit. The defendant will maintain proper accounts and will file their statement of accounts on affidavit in Court every six months. 20. In view of the above, I modify the interim order passed by this Court on 14.2.2019 as above. The applications stand disposed of. Application disposed of.