BIKANERVALA Vs. BIKANER SWEETS

JUDGEMENT

(1.) THIS suit for permanent injunction has been filed by the plaintiff praying for a restraint order against the defendant (through its proprietor/partners, servants, retailers, stockists, distributors, representatives and agents) from infringing its trade mark and copyright of the plaintiff in its distinct style in the expression 'BIKANERVALA' and passing off its products as being those of the plaintiff. Damages at Rs. 20,00,000/ - are also prayed (Rs. 15,00,000/ - for loss suffered by the plaintiff on account of illegal trade activities of the defendant and Rs. 5,00,000/ - as punitive damages)

(2.) THE plaintiff claims to be a partnership firm; the partners in the plaintiff claim to have inherited the business of manufacturing and marketing ethnic foods including sweets and namkeens from their forefathers, who have been in this business for the last about 100 years and have inherited a vast treasure of recipes of traditional Indian sweets and namkeens developed and perfected down the generations. In the year 1981 the plaintiff established a major outlet in the capital at Karol Bagh, under a coined trade name / trade mark 'BIKANERVALA' which, as a whole, is inherently distinctive and was not being used by any competitor of the plaintiff firm before it was coined. The Hinglish expression 'BIKANERVALA' of the plaintiff due to its unique combination of English and vernacular language and because of the goodwill and reputation generated by the plaintiff by its untiring efforts for more than two decades has been a runaway success amongst the trade and public and has succeeded in achieving an extremely high recall value in the minds of the intending purchasers. It is contended that the plaintiff's business has grown by leaps and bounds and at present is one of the major traders in traditional sweets and namkeens in India along with its associate firms / companies and a number of retail outlets spread far and wide so much so that the said trade mark/trade name 'BIKANERVALA' has assumed a secondary significance as a household name and qualifies to be a well known and famous trade mark under Section 2(1)(zg) of the Trade Marks Act, 1999. It is further alleged that due to the extensive and wide user of the said coined trade mark / trade name 'BIKANERVALA', the same has become a household name which is recognized and hailed by one and all as a source of superior and impeccable quality of the sweets, namkeens and other cognate products originating from the plaintiff firm exclusively. It is stated that the plaintiff's products are manufactured under strict quality control measures and after following international standards of hygiene and freshness. Regular laboratory checks in respect of quality of final product and raw materials are carried out. The plaintiff operates highly advanced manufacturing plants and fully automated processing units and high quality in - house packaging, as such the products of the plaintiff have earned a reputation for high quality in the eyes of public at large.

(3.) THE plaintiff says that it, in association with its sister concerns and franchisees/licensees has conducted sales in respect of its various products bearing the aforesaid trade mark for an amount of more than Rs. 400 crores. The plaintiff further claims that such sales figures establish its popularity, goodwill and reputation which its products have acquired in the trade and the public, which is an indication of the confidence reposed in the products originating from its (the plaintiff's) firm. These, in turn, indicate that the said trade mark and the distinctive label/packaging of the plaintiff have achieved the status of well known trademarks.