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Brief Facts of the Case
The plaintiff in this case claimed to be owner of the trademark “Rajmoti” that it adopted in 1962. The plaintiff used “Rajmoti” as a trademark as well as a distinctive logo for edible oils that included cotton seed oil and groundnut oil. The plaintiff later expanded the business to mineral and aerated waters, beers, fruit drinks, juices, etc. The word “Rajmoti” is also a remarkable feature of the Plaintiff’s business name i.e. M/S Shree Rajmoti Industries. The plaintiff claimed that its trademark was registered in classes 29 (Meat, Fruits, Milk and Oils), 31 (Grains, Fresh Fruits and Vegetables), 32 (Water and Non-Alcoholic Beverages), 35 (Business Services and Consulting) and 42 (Technology and Software Services).
The defendant in the case at hand was engaged in manufacturing and selling of rice. The plaintiff claimed that the defendant used the mark “Rajmoti Rice” and thus the act of using an identical mark as that of the plaintiff constituted trademark infringement and passing off.
The plaintiff prayed for a decree of permanent injunction preventing the defendant from using rice or any other goods under the impugned trademark or label bearing the word “Rajmoti Rice” or any other trademark or label which is either identical with or deceptively similar to the word “Rajmoti”.
Issue before the Court
Whether the use of the word “Rajmoti” for rice would violate plaintiff’s right’s in the trademark “Rajmoti”?
Holding of the Court
The single judge bench of the Calcutta High Court ordered an ex parte interim injunction. The court reasoned that the principle of irreparable harm was applicable in the present case.
In order to answer the question before it, the court took into consideration the usage of the marks by both the parties and concluded that the plaintiff had been extensively used the mark for decades unlike the defendant who could not support its claim that it had been using the marks since 2007.
The court took into account the nature of the products and the way these products are sold in the markets. It concluded that both rice and oil are usually sold in close proximity and the customer base is also identical. The court then said that it was common for an owner of a trademark to employ the same mark for similar products while expand business. The court relied on Supreme Court’ judgement in Laxmikant Patel v. Chetanbhai Shah where it was held that the business may be carried on in the future especiallyfuture market expansion should also be taken into consideration while judging passing off.
Finally, the court applied Section 29(2) of the Trade Marks Act, 1999 and held if the trademark is identical to the registered trade mark, it is sufficient if the goods are either identical or similar for constituting infringement under the section.
As in the present case, the products, edible oils and rice were of similar nature and thus, the plaintiff must be provided remedy in form of interim injunction.
Judging by the facts and evidence presented before the court, the case seems to be a classic example of passing off and infringement.
The evidence showed that the plaintiff used its trademark since 1961 as opposed to the defendant who claimed that it has been using the said trademark since 2007 but could not produce evidence before the court to prove its usage. Further, sales figures of plaintiff are in crores which shows the widespread usage of his trademark. There is no question of delay in filing of the suit for injunction. As rightly held by the court in this suit, the nature of goods sold by the plaintiff and the defendant are of similar nature and so is the market of consumption of these goods. It is important to note that customers of the plaintiff are common and unwary people who could be easily misled. Thus, it is highly likely that the defendant’s usage of plaintiff’s trademark would deceive customers and can cause damage to plaintiff’s business reputation.
We must also throw light on court’s mindfulness of “natural expansion of business” doctrine.In light of these circumstances, we should visit a recent Supreme Court’s judgement inNandhani Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. where this doctrine was argued. The court, in this case, finally held that the respondent’s/plaintiff’s business was solely meant for trading in milk products only (class 29) and it had not intent to expand its business to other products that fall under class 29 or 30 in the future. Relying on this conclusion, the court ruled in favour of the appellant who dealt with food products such as meat and fish.
In the present case, however, the plaintiff’s consistent expansion of business coupled with its extensive use of the trademark was the reason behind court applying “natural expansion of business” doctrine in favour of the plaintiff. Further, the fact that defendant failed to show that it had been using the trademark in good faith for products in which the plaintiff’s goods had not acquired distinctiveness.
The case is important as the doctrine of natural expansion of business has been comparatively less prominent in Indian trademark regime.
Author: Mr. Parimal Kashyap, 3rd year BA LLB(Hons.) at Dr. Ram Manohar Lohiya National Law University, Lucknow Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at firstname.lastname@example.org.