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Pan Seed Pvt. Ltd. v/s M/s. Kishan Green Field Agritech & Others

    GA. No. 1712 of 2019 With CS. No. 136 of 2019

    Decided On, 08 November 2019

    At, High Court of Judicature at Calcutta

    By, THE HONOURABLE MR. JUSTICE ASHIS KUMAR CHAKRABORTY

    For the Plaintiff: Ranjan Bachawat, Sr. Advocate, Debnath Ghosh, Goutam Kr. Ray, T.K. Jana, Gopal Das, Sourav Jana, S. Mitra, Advocates. For the Defendants: Suvasish Sengupta, Balarko Sen, Bimalendu Das, Advocates.



Judgment Text

One Alok Marodia was carrying on business as manufacturer and trader of agricultural seeds under the name and style of M/s. Annapurna Seeds as the sole proprietor thereof with the trade mark "PAN". Since 1972 the said Alok Marodia had been using the said trade mark "PAN" with the pictorial device of a betel leaf. Subsequently, with effect from January 15, 2001 the said Alok Marodia became the proprietor of the registered trade mark "PAN" with the pictorial device of betel leaf for seeds of all kinds included in Class 31. With effect from April 1, 2011 the petitioner company was incorporated and it took over the proprietorship business of the said Alok Marodia. On April 1, 2011 the said Alok Marodia executed a deed of assignment thereby, assigning the said trade mark "PAN" with the pictorial device betel leaf in favour of the petitioner. By the said deed of assignment the said Alok Marodia also assigned various other trade marks which he had obtained in respect of goods of Class 31. In this regard, the petitioner has disclosed a copy of the said deed of assignment dated April 1, 2011 as Annexure-'C' thereto.

The trade mark "PAN" along with the pictorial device of betel leaf is claimed to be an original artistic work within the meaning of the Copyright Act, 1957 and in the year 2007, the said Alok Marodia obtained registration of such artistic work under the Copyright Act, 1957. The name of the petitioner is duly recorded as the subsequent proprietor of the said copyright. In this connection, the petitioner has disclosed the relevant documents showing the registration of the said copyright in favour of the said Alok Marodia and the subsequent, recording of its name as the proprietor of the said copyright. Even the name of the petitioner has also been recorded in the register of trade marks as the subsequent proprietor of the mark containing the expression "PAN". In this regard, the petitioner has disclosed the relevant document.

In addition, the petitioner has also obtained registration of the mark "PAN" in Class 44 and it has disclosed the relevant registration certificate. Apart from the registration of the said trade mark consisting of the word "PAN" the petitioner filed several other applications for registration of the expression "PAN" along with pictorial device of betel leaf and also in conjunction with other words in Class 31 under the Trade Marks Act, 1999. All such trademarks applied by the petitioner have been duly registered by the registering authority and the same are valid and subsisting. The petitioner has also obtained registration of its sub-brands "RANJANA" and "GANGA" under the Trade Marks Act, 1999 and in this regard it has disclosed the relevant documents.

According to the petitioner, by dint of long and continuous use of wide publicity thereof, its trade mark "PAN" has acquired secondary meaning in the course of trade and the said expression "PAN" has been exclusively associated with the petitioner only and no one else. The petitioner also claims to maintain a research and development unit in the district of Burdwan, West Bengal as Research Institute by the Ministry of Science and Technology.

In or about October, 2017 the petitioner came to learn from the trade marks journal dated August 28, 2017 that the respondent no.1, a partnership firm of which the respondent nos. 2 and 3 are the partners, has filed an application for registration of the mark "DOUBLE PAAN" represented in a deceptive manner as similar to that of the petitioner's trade mark "PAN". The petitioner has filed a notice of opposition to the application of the respondent no.2 for obtaining registration of its trademark "DOUBLE PAAN". The application of the respondent no.1 before the Registrar of Trade Mark is pending and it has not yet obtained registration of the trade mark i.e. "DOUBLE PAAN". In this regard, it is to be noted that in its application before the Registrar of Trade Mark the respondent no.1 has stated that it is only proposing to use the said trade mark "DOUBLE PAAN", implying that it is yet to sale any product of class 31 with the said trade mark "DOUBLE PAAN". On October 10, 2017 the petitioner issued a notice calling upon respondent no.1 to stop using the deceptive trade mark "DOUBLE PAAN". The respondent however, did not respond to the said notice. It has been alleged that the market survey carried out by the petitioner it appears that after receipt of the notice dated October 10, 2017 the respondent no.1 did not sale any product with the trade mark "DOUBLE PAAN". Subsequently, however, the petitioner found that the respondent no.1 started to sell seeds with the trade mark "DOUBLE PAAN" with the pictorial device of betel leaf represented in a deceptively similar manner to confuse and deceive the public. Accordingly, the petitioner sent a further notice dated May 13, 2019 calling upon the respondent no.1 to discontinue the sale of any seed with the trade mark "DOUBLE PAAN" with a device of a betel leaf. Upon lodgment of a complaint by the petitioner with the District Enforcement Branch, Purba Burdwan when the officer of the Enforcement Department conducted a raid at the office of the respondent no.1 and seized some packaging containing the trade mark "DOUBLE PAAN". Even thereafter, the respondent no.1 are selling their seed products falling under Clause 31 with the trademark "DOUBLE PAAN" along with the device of a betel leaf. In this regard, the petitioner has disclosed a photocopy of the packaging in which the respondent no.1 and its dealer/distributor, the respondent no.4 are selling seed products under the trade mark "DOUBLE PAAN". The petitioner has further alleged that the respondent no.1 has not only kept the principal trademark "PAN" of the petitioner but it has also adopted wrongfully and illegally adopted and used the mark "RANJANA". According to the petitioner, the respondent no.1 and its partners have been infringing the registered trade mark of the petitioner "PAN" by use of the mark "DOUBLE PAAN" in the following manner:-

(i) by affixing the mark "DOUBLE PAAN" and/or DOUBLE PAAN along with the device of a betel leaf on the goods and the packaging thereof;

(ii) by offering or exposing the goods under the mark "DOUBLE PAAN" and/or DOUBLE PAAN along with the device of a betel leaf as for sale, putting them on the market, or stocking and/or offering supplies under the mark "DOUBLE PAAN" and/or DOUBLE PAAN along with the device of a betel leaf;

(iii) by using the mark "DOUBLE PAAN" and/or DOUBLE PAAN along with the device of a betel leaf as shown in Annexure "S" hereto on business papers and advertising.

In view of the above facts, the petitioner has brought the suit against the respondents for infringement of trade mark and copyright and claiming the relief mentioned in paragraph 28 of the application.

It is submitted by the petitioner that the adoption and use of the mark "DOUBLE PAAN" along with the device of a betel leaf by the respondent no.1 is dishonest, mala fide and made with a intent to mislead the innocent customers. The wrongful adoption and use of the impugned trade mark "DOUBLE PAAN" along with a device of a betel leaf by the respondent no.1 amounts to infringement of its registered aforementioned trade marks and copyright. Urging all these and relying upon the Single Bench decision of this Court in the case of Shambhu Nath & Brothers & Ors. -vs- Imran Khan, reported in (2019) 1 CHN 774 the learned Senior Counsel appearing for the petitioner pressed for an interim order of injunction restraining the respondents from manufacturing, selling, advertising, distribution or advertising in print or electronic media or internet and/or otherwise deal in seeds or goods under the offending mark "DOUBLE PAAN" and/or "DOUBLE PAAN" along with the device of betel leaf as shown in Annexure "S" to the petition.

The respondent nos.1, 2 and 3, however, raised objection to the prayer of the petitioner in this application. It was argued for the said respondents that in the instant case it is evident from the document disclosed as Annexure-'I' to the petition that the petitioner has obtained registration of the word mark "PAN" in Class 44, i.e., service relating to agriculture, horticulture and forestry. By referring to sections (1) and (2) of the Act of 1999 it was argued that since the petitioner's trademark "PAN", being Annexure-'I' to the petition, does not relate to the goods of Class 31, i.e., seeds, the petitioner cannot complain that by using the mark "DOUBLE PAAN" with the pictorial device of betel leaf the respondents have committed any act of infringement of the petitioner's trade mark. It was contended that in view of the provisions contained in sub-section (2) of section 17 of the Act of 1999 (in short, "the Act of 1999") when the petitioner is not the proprietor of any registered trade mark of the betel leaf device above it cannot complain any infringement of its trade mark "PAN" with device of betel leaf. In support of such contention the said respondents referred to a single Bench decision of this Court in the case of Three-N-Products Pvt. Ltd. vs. Emami Limited, reported in 2008 (4) CHN Cal 608, as well as the Division Bench decision of this Court in the case of Three-N-Products Pvt. Ltd. vs. Emami Limited; reported in 2010 (2) CHN Cal 217. It was further submitted that without granting any opportunity to the respondent nos.1, 2 and 3 to file their affidavits in opposition there is no scope for passing any ad interim order in this application. Accordingly, a prayer was made by the respondent nos.1, 2 and 3 to grant them an opportunity to file their affidavits in opposition to this application before passing any interim order in this application.

The registered trade mark "PAN" with such device in its favour betel leaf by the said Alok Marodia. The petitioner has also disclosed that it is also the assignee of the copyright obtained by Alok Marodia in respect of the artistic work depicted in the trademark "PAN" along with device of betel leaf.

The respondent nos. 1, 2 and 3 could not dispute the copy right of the artistic work, comprising the trade mark "PAN" along with the device of betel leaf being presently recorded in the name of the petitioner. With regard to the contention raised by the respondent nos.1, 2 and 3 that the petitioner has not been able to substantiate any infringement of its said trade mark under sub- section (1) of Section 29 of the Act of 1999. By referring to the single Bench decisions of this Court in the case of Shambhu Nath (supra) it was submitted by the petitioner that it is well settled that a person shall be held to have infringed the trade mark of another if he seizes upon some essential features of the plaintiffs' mark.

It was next argued that the trade mark number 983846 dated January 15, 2001 was issued by the registering authority in favour of the petitioner for seed products falling under class 31 subject to the condition that registration of the same trade mark would not give any right to exclusive user of the device of leaf. Subsequently on June 29, 2004 the registering authority has issued the certificate evidencing registration of an identical trade mark in favour of the petitioner without imposing any condition with regard to exclusive user of the device of leaf. According to the petitioner, with the enactment of the Act of 1999 particularly Section 17 thereof, the petitioner is entitled to have exclusive right in its entirety of the trademark "PAN" with the device betel leaf. Further, under sub-section (2) of Section 17 of the Act of 1999 the petitioner also has the right to claim exclusive use of the trade mark "PAN". This is for the reason that the petitioner has already obtained separate registration of the trademark "PAN". Therefore, the petitioner is entitled to the exclusive use of registered label as a whole, as also the trade mark "PAN". It was submitted that unlike sub-section (2) of Section 29 of the Act of 1999, Section 17 thereof does not put any stipulation that such a registration or application must be relatable to the goods of the same class. Therefore, the contention raised by the respondents that on the basis of the registration of the trade mark "PAN" in class 44 is devoid of any merit. In any event the petitioner has disclosed the registration of his various other trade mark in class 31 bearing the mark "PAN".

I have considered the materials on record as well as arguments advanced by the petitioner as well as the respondent nos.1, 2 and 3. In the present case admittedly the petitioner is the present proprietor of the trade mark "PAN" with the device of betel leaf. The respondents could not dispute the fact that such artistic work of the trade mark "PAN" along with betel leaf presently stands recorded in the name of the petitioner. The registration certificate granted by the Registrar of Trade Mark in favour of the petitioner on June 29, 2004 does not impose any condition that the registration of the trade mark "PAN" with the device of betel leaf does not confer any right on the petitioner to the exclusive use of the device of betel leaf. Therefore, the petitioner is also entitled to protect its trade mark "PAN" in class 31. In the facts of this case, the decisions of the Single Bench and the Division Bench of this Court in the cases of Three- N- Products Pvt. Ltd. (supra) are of no assistance to the respondents. Considering the respective trade marks used by the

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parties as appearing at pages 35 and 235/236 to the petition, I am prima facie satisfied that the respondent has copied the essential features of the registered trade mark of the petitioner "PAN" with the device of leaf. In view of the single Bench decision of this Court in the case of Shambhu Nath & Brothers (supra), the addition of the words "DOUBLE" and the spelling of "PAAN" used by the respondent no.1 as its trade mark do not distinguish the goods of the respondent no.1 from those of the petitioner. The petitioner has also prima facie substantiated infringement of copyright of the artistic work of the said mark "PAN" along with betel leaf. The balance of convenience also lies in favour of the petitioner to obtain interim order of protection of its above trade mark and copyright as well. For the reasons aforesaid, there shall be an ad interim order in terms of prayers (a), (c) and (d) of the notice of motion. The respondents will file their affidavit-in-opposition within three weeks from date; reply thereto, if any, be filed two weeks thereafter. The application will appear, under the heading, "Adjourned Motion" in the monthly list of December, 2019. A prayer is made on behalf of the respondent nos.1, 2 and 3 for stay of operation of this order. Such prayer is considered and rejected. Let, urgent certified website copy of this order, if applied for, be made available to the parties subject to compliance with requisite formalities.
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