CS (COMM) 347/2022 Court: The High Court of Delhi
INTRODUCTION
This case was filed before the Hon’ble High Court of Delhi by the Plaintiff under Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908 for an order restraining Defendant from producing, selling, offering for sale or advertising, promoting its good or services, exporting or enabling advertising campaigns either directly or indirectly in any form any product bearing the impugned mark/ package which was deceptively similar to Plaintiffs’.
FACTS OF THE CASE
1. Plaintiffs are in the business inter alia of processing, marketing, and exporting rice.
2. It was the predecessor of the plaintiff that coined and conceived the plaintiffs’ mark ‘ROYAL’ in 1989 and then later assigned it to ‘M/s Kusha Inc.’ on 14.10.2000, who in turn assigned them to the plaintiff vide Assignment Deed dated 16.12.2008. An application for registration of the mark was filed and the mark was registered in the year 2003.
3. The plaintiffs are aggrieved by the adoption of the mark ‘ZABREEN ROYAL’ (the ‘impugned mark’) by Defendant for the manufacture, sale, and distribution of its Basmati Rice. Adoption of the same being identical/ deceptively similar to the Plaintiffs’ mark is bound to result in causing irreparable harm and injury to them.
ARGUMENTS OF THE PLAINTIFF
1. The contention of the defendant that the word/mark ‘ROYAL’ is descriptive in character, cannot be accepted. The mark can at best be stated to be suggestive. For the purposes of rice, it would be a completely arbitrary term. Furthermore, the reliance placed by Defendant on the reply of Plaintiff to the examination report is ill-founded because the marks that were cited by the Trade Marks Registry were for different goods.
2. Defendant having foregone its right in the mark cannot claim any right to use it as per notification Dt. 22.09.2017 issued by the Ministry of Finance under Section 11 (1) of the Central Goods and Services Tax Act, 2017.
3. Merely because there are other marks with the word ‘ROYAL’ registered in Class 30, would also not ensure the benefit of the defendant in absence of any evidence of usage of such marks.
ARGUMENTS OF THE DEFENDANT
1. ‘ROYAL’ is a laudatory term that is incapable of distinguishing the goods and services of one person from those of the other and thus is devoid of any distinctive character. Hence, the mere registration of the mark ‘ROYAL’ cannot grant the Plaintiffs exclusive right to the term.
2. As per Section 17 of the Trade Marks Act 1999 “the protection given is only to the trade mark as a whole and not parts of the same”. Therefore, since the registrations granted in favor of the plaintiffs are in device marks and not the word mark, the same cannot confer a right upon the plaintiffs to monopolize the mark ‘ROYAL’.
3. The overall trade dress/label of the defendant’s product is completely different from the plaintiffs’. Furthermore, the plaintiffs are using their own mark ‘ZABREEN’ which is highly distinguishable and thus there cannot be any confusion between the plaintiffs‟ products and the defendant’s product.
4. Placing reliance on the reply submitted by the plaintiff to the Examination Report, he submits that the plaintiffs have distinguished other marks with the word ‘ROYAL’, stating that there is a device mark. The plaintiffs are now estopped from claiming a separate right in the word ‘ROYAL’.
OBSERVATION OF THE COURT
The Court observed that it is essential to decide on the Application filed under Order 39 Rule 1 and 2 of the CPC and made the following observations:
=> The difference between descriptive and suggestive
The Court relied on the case of Bata India Limited v. Chawla Boot House & Ors. (MANU/DE/1368/2019), and the explanation of ‘McCarthy on Trademarks and Unfair Competition’ to lay down the following observations:
1. In ‘McCarthy on Trademarks and Unfair Competition’, the learned author explains the spectrum of the distinctiveness of marks as:
(i) “inherently distinctive”;
(ii) “non-inherently distinctive”; and
(iii) marks with “no distinctiveness”.
And further states that “suggestive” marks are to be placed in the category of “inherently distinctive marks”, while “descriptive marks” in “non-inherently distinctive marks”, for which secondary meaning is required. This does not end the inquiry as to the strength of a mark, rather it is only the first step; whereas the second step is to determine the strength of this mark in the marketplace.
2. The most popular test to determine whether the mark is “descriptive” or “suggestive” is the “Imagination Test”, which says: “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”.
3. 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 suggests these things. If the mental link between the word and the product‟s attributes is not almost instantaneous, this strongly indicates suggestive and not direct descriptiveness.
Therefore, in the present case- though, 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.
4. The second test suggested is the “Competitors’ Need Test”, which states that if the is positive to the question “is the word or words likely to be needed by the competitive sellers to describe their goods?” then the word/words are descriptive.
Applying this test against the word ‘ROYAL’, this term 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, unlike the case in Marino Ltd. v. Agro Tech Foods Limites (2010 SCC OnLine Del 3806), Soothe Healthcare Pvt. Ltd. v. Dabur India Limited (2022 SCC OnLine Del 2006), or Red Bull AG v. Pepsico India Holdings Pvt. Ltd. and Another (2022 SCC OnLine Del 969).
5. The Court also emphasized the case of Sime Darby Edible Products Ltd. v. Ngo Chew Hong Edible Oil Pts Ltd. ((2000) SGHC 145), where it was held that the word ‘ROYAL’ alone being laudatory, was descriptive in character and may not be registrable without proof of acquisition of a distinctive character as a result of the use made of it. In the present case, the mark of the plaintiffs herein already stands registered.
6. Hence, while in the prima facie view of the Court, the plea of the defendant that the word ‘ROYAL’ being a descriptive term is not entitled to any protection, was liable to be rejected. However, at the same time, the word ‘ROYAL’ being laudatory, the effect thereof would still have to be considered.
=>Effect of Device Mark Registration in the case
1. Apart from the device mark registered under application No.1175315, the Plaintiff no.1 also holds a registration under Application No.1548937 and 1339882 in the label mark of which the word ‘ROYAL’ is the only part, though in a stylized manner. Therefore, applying the test laid down in the case of M/s South India Beverages Pvt. Ltd. v. General Mills Marketing Inc. and Anr. ((2015) 61 PTC 231 (Del) (DB)) and Pidilite Industries Ltd. v. S.M. Associates & Ors. ((2004) 28 PTC 193), the word ‘ROYAL’ remains a dominant part of the trade mark of the plaintiffs and after removing it, the remaining is only an embellishment. Therefore, the word ‘ROYAL’ per se would also be entitled to protection, though while making a comparison with the complained mark, due deference would have to be laid to the fact that the plaintiff does not have a word mark registration.
=> The Commonality of the Mark to Trade
1. Only after the parties have led their evidence, a final decision can be made on this. Rest, as the Court held in Pankaj Goel v. Dabur India Ltd. (2008 SCC OnLine Del 1744), the use of a similar mark by a third party in violation of the plaintiff‟s right is no defence.
=> Effect of Defendant’s claim under Notification dt. 22.09.2017
1. Since Defendant was not claiming any right in the word ‘ROYAL’ as a trademark, but only using the word in a descriptive sense, this claim was not acceptable by the learned Court.
=> Exception to the claim of infringement and also passing off as pleaded by the Defendant under Section 30(2)(a) and 35 of the Trade Marks Act, 1999.
1. The word ‘ROYAL’ is indeed a laudatory word. To claim the defense, it would have to be determined as to whether the use of the same by the defendant is merely to depict the quality of its rice.
2. Since the present packaging of the defendant, which was complained of in the present suit by Plaintiff, shows that the word ‘ROYAL’ has been used prominently, not merely to depict the quality of the rice, its use would lead to dilution of Plaintiff’s mark and, therefore, cannot be permitted in such manner.
CONCLUSION
The application was disposed of by the court. They restrained the defendant from using the packaging complained of by Plaintiff.
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Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
