MERISANT COMPANY Vs. EQUAL MINERALS

JUDGEMENT

(1.) By this order, I shall dispose of an application under Order 39 Rules 1 & 2 of Civil Procedure Code (CPC) preferred by the plaintiffs for grant of injunction against the defendants in respect of use of trademark EQUAL. It is submitted by the counsel for plaintiffs that the plaintiffs were engaged in manufacturing and marketing of granulated sweetener under the trademark EQUAL. The trademark of plaintiffs EQUAL was a well-known trademark in India and other countries of the world. It was adopted by plaintiffs' predecessor in US in the year 1979 and major commercial sales started in 1981. The plaintiffs' product was the first aspartame based low calories sugar substitute ever marketed and this product was being marketed in various parts of the world including India and the trademark EQUAL was exclusively associated with the business of plaintiffs. The reputation of the plaintiff's trademark EQUAL even extended to the cognate and allied goods being sold at the same counter manufactured by the same manufacturer. This trademark EQUAL was registered vide No. 376816 of 9th June, 1981 in Class 1 in respect of Synthetic low calorie sweetening preparations and was advertised in Trade Mark Journal No. 850 dated 1st February 1986. The trademark EQUAL was registered under Class 30 on 4th May, 1987 in respect of food products (trademark was advertised in Trade Mark Journal No. 970 dated 1st November, 1989 at page No. 994). Another application for registration of trademark under Class 5 was pending registration since 4th May, 1987. It is submitted that on account of priority in adoption, long, continuous and extensive use of the trademark EQUAL in India and other parts of the world, the plaintiffs and predecessor have acquired and retained an exclusive right to use trademark EQUAL in respect of the sweeteners as well as other cognate and allied goods. It is further submitted that the plaintiffs spent huge amount on advertisements of trademark EQUAL and total sale figures of Plaintiff Company all over the world bearing the said trademark EQUAL were considerably high. Defendant No. 1 was manufacturing and marketing mineral water and sparkling sold and selling the same under the trademark EQUAL. Plaintiff also learnt that defendants had applied for registration of the trademark EQUAL under various classes under the name and address of defendant No. 2. Defendants No. 1 and 2 were both owned by Narang family. Plaintiffs learnt about defendants' application for registration of trademark EQUAL in the year 2002 and learnt that the defendants have applied for registration of trademark EQUAL in Classes 1, 3, 4, 11, 25, 27, 29, 31 & 32. It is submitted that the defendants trademark EQUAL was deceptively similar to the trademark of plaintiffs and was in similar style and thus defendants were guilty of infringement of trademark of plaintiffs. Defendants were also guilty of passing off or enabling others to pass off their goods and business as the goods and business of plaintiffs because of user of trademark EQUAL, therefore, defendants were causing loss and there was likelihood of other losses being suffered in the business of plaintiffs and reputation of plaintiffs. The defendants were also liable to render the account to ascertain the loss.

(2.) In reply to this application it is submitted by defendants that defendants trademark 'EQUAL with a geometrical sign of EQUAL(=) was in use since July, 1988 and it was registered in Class 12 since 9th December, 1988, well within the knowledge of plaintiffs. This trademark was registered in favour of defendants by Trademark Registry after a thorough search. The trademark was initially got registered by defendants in respect of the plastic auto parts. The defendants had started their business under the name of M/s Narang Technoplast and got this trademark registered when the plaintiffs were not even known anywhere and there was no other company using trademark 'EQUAL'. Thus, the question of adopting trademark pertaining to plaintiff did not arise. Defendants obtained further registration of trademark EQUAL in respect of cutlery, spoons in Class 8 & 12. These registrations were in the name of M/s Narang Technoplast owned by Shri Ashok Narang. In the year 1995, Mr. Ashok Narang formed another sole proprietary firm under the name and style of M/s EQUAL MINERALS in order to set up a business of packaged drinking water and sparkling soda and started its unit at Rewari, Haryana which commenced production in August, 2001. Defendant No. 1 continued to use the trademark EQUAL in respect of mineral water, sparkling soda since August, 2001 and also continued the family business. The EQUAL MINERAL and EQUAL PLASTICS PVT. LTD were family business of Mr. Ashok Narang and his family members in respect of Plastic bottles, mineral water and plastic Auto Parts and the trademark EQUAL was being used since July, 1988 exclusively by defendants for its products.

(3.) It is submitted that the plaintiff's allegations of passing off/infringement were baseless. The plaintiff had no reputation in India neither he had copyright over the design of word 'EQUAL'. The trademark EQUAL in respect of mineral and aerated water was granted to the plaintiff only on 20th March, 2003, much after the trademark EQUAL was registered in favour of defendant.