Bhole Baba Milk Food Industries Limited Versus Parul Food Specialities (P) Limited

7th August, 2023 - 7:41 am Categories: Legal Issues Trademark 0 Comments

Parties:

• The Plaintiff manufactures and sells milk and dairy products. They have been using the mark ‘KRISHNA’ since the year 1992 and have earned substantial goodwill in the market.
• The Defendant filed for the registration of its trademark ‘Parul’s Lord Krishna’ bearing application number 1863747, on 17 September, 2009.

Brief Facts:

Brief facts of the case are as follows:

The Plaintiff has three registrations in respect of the trademark ‘KRISHNA’.

A label mark that features a picture of Lord Krishna sitting on a lotus flower having registration number 597519 in respect of milk and dairy products falling in class 29. The said label mark was not being utilised by the Plaintiff.

A word mark ‘KRISHNA’, which has an elliptical contour on the outside and is a subject matter of a certificate bearing registration number 599070 in respect of ghee falling in class 29.

• A trademark ‘KRISHNA’ bearing registration no. 783679B in respect of skimmed milk powder, whole milk powder and dairy whitener falling in class 29.
• In addition to that, the Plaintiff also has a registered copyright bearing no. A-56134/99 in respect of artistic work.
• The Defendant filed for the registration of its trademark ‘Parul’s Lord Krishna’ with the office of Registrar of Trade Marks bearing application number 1863747, on 17 September, 2009.
• The Plaintiff learnt about the defendant’s impugned mark, ‘Parul’s Lord Krishna’ in October, 2009 and soon after, sent a cease and desist notice to the Defendant on 24^th October 2009.
• Subsequently, the Defendant filed rectification proceedings dated 18^th February, 2010 bearing application no. 066/2010 before the Intellectual Property Appellate Board, Chennai against the plaintiff’s word mark KRISHNA, seeking its removal from the register of trade marks.
• By an order dated 25^th January 2010, the Hon’ble Delhi High Court prohibited the Defendant from using the infringing mark ‘KRISHNA’ or any other mark that was identical or deceptively similar to the Plaintiff’s mark.
• On 2^nd November 2010, the Defendant formally filed the label it intends to use in place of the one it was already using.
• This filing was preceded by an order dated 1^st October 2010, in which the counsel for Defendant presented the revisions they were proposing to the trademark label that was filed by the Defendant.
• The counsel on behalf of the Defendant argued at this hearing that they had been given instructions to argue the application for vacation of the ad interim order dated 25^th January 2010, on the basis of the proposed trade mark label.

Issues:

• Has the mark ‘KRISHNA’ acquired sufficient distinctiveness?
• Whether the user of the word ‘KRISHNA’ by the Defendant constitutes passing off?

Applicable Rules:

• Section 9 of the Trademarks Act, 1999;
• Section 30 of the Trademarks Act, 1999;
• Section 35 of the Trademarks Act, 1999;

Arguments on behalf of the Plaintiff:

The Plaintiff argues that they have registered marks of ‘KRISHNA’ which result in a statutory monopoly in their favour, therefore, the Defendant should be injuncted from using any mark identical to the registered marks of the Plaintiff as a matter of right.

Furthermore, the Plaintiff asserted that the Defendant has used the word ‘KRISHNA’ in the impugned mark with a mala fide intention of reaping benefits out of the Plaintiff’s goodwill and reputation. The Plaintiff also submitted that mere addition of a prefix does not dilute the rights of the Plaintiff over the impugned mark.

In addition to that, the Plaintiff rejected the stand of the Defendant that the word ‘KRISHNA’ could not be monopolised and as such placed reliance on Mukesh Khadaria Trading as Aggarwal Udyog v. DCM Sriram Consolidated Ltd. (2009).

Arguments on behalf of the Defendant:

The Defendant contends that the term ‘KRISHNA’ is used by several manufactures in the same industry and outside.

The Defendant further argued that the Plaintiff should not be entitled to monopolise the mark ‘KRISHNA’ because it is descriptive and generic in nature and has attained the status of publici juris. It is a well-settled legal principle that a mark that is publici juris or generic in character cannot be protected under the Trade Marks Act, 1999.

Ratio

The Hon’ble Delhi High Court opined that the test of secondary distinctiveness for a common name should be the same as that for a descriptive mark. By applying the same test, the Ld. Single Judge, Justice Rajiv Shakdher refused to conclude that a name as common as KRISHNA has achieved requisite secondary distinctiveness. Further, the Hon’ble High Court expressed that the Plaintiff has not placed on record any affidavits of consumers which would demonstrate that the word KRISHNA brings immediately to mind Plaintiff’s product.

The Defendant on the other hand has categorically added prefix in its trademark before the common word ‘KRISHNA’. The Defendant has used words like “Parul’s” and “Lord” prior to the word ‘KRISHNA’. The Hon’ble Delhi High Court found that prima facie there was nothing that could show any dishonest intention on the part of the Defendant.

The Hon’ble High Court placed reliance on the case of Marico Ltd. v. Agro Tech Foods Ltd (2010) wherein it was held that in case a descriptive mark is a combination of common English words which leads to confusion in distinguishing the mark from other, the user will not be entitled to seek monopoly over the said mark. Such a mark can be impugned at the stage of registration as per Section 9 of the Trademarks Act, 1999 and even after its registered as per Section 30 and Section 35 of the Trademarks Act, 1999.

The next aspect for discussion was whether the word ‘KRISHNA’ constitutes passing off. In this regard, the Hon’ble High Court of Delhi relied on Rhizome Distilleries P. Ltd. v. Pernod Ricard S.A. France (2010) wherein it was held that neither of the parties shall be entitled to an exclusive right over the term ‘IMPERIAL’. In the alcohol industry, the word ‘IMPERIAL’ is used by several alcohol manufacturers which is why it is generic and descriptive in nature and all the parties using the word ‘IMPERIAL’ will have to co-exist.

In light of the discussions, the Ld. Single Judge modified the order dated 25^th January 2010 and permitted the Defendant to use the label mark which was filed on 2^nd November 2010. The Defendant was directed to make sure that the prefix “Parul’s” and “Lord” shall have a font size and prominence similar to the word KRISHNA.

Author: Sonakshi Pandey, Symbiosis Law School, NOIDA, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at Khurana & Khurana, Advocates and IP Attorney.