CARGILL INDIA PVT LTD Vs. GATI LTD

JUDGEMENT

(1.) I.A. No. 16635/2018 (application under Section 124 of the Trademarks Act read with Order 14 Rule 5 and Section 151 of CPC.

(2.) It is the case of Plaintiff that it is the registered proprietor of the trademark "NATUREFRESH' and the Defendant is using an identical trademark "GATI Nature Fresh Apples" (hereinafter referred to as "the impugned mark") and infringing Plaintiff's statutory and common law rights. Defendant is contesting the suit on the ground that the words "NATURE FRESH" in the impugned mark are being used in a descriptive and bona-fide manner to describe the nature and characteristics of its goods and not as a trademark. Defendant also contends that Plaintiff's trademark being generic in nature, its registration for the mark "NATUREFRESH" is invalid. Defendant argues that no proprietorship can be claimed over such words under the Trademark Act, 1999 (hereinafter 'the Act').

(3.) On 2nd November 2016, after Plaintiff's evidence was concluded, Defendant filed an amended Written Statement and disclosed that its mark "GATI Nature Fresh Apples" had been registered under TM No.1775864. Plaintiff is aggrieved with the above action and as a precursor for initiating rectification proceedings before IPAB, by way of the present application, it seeks framing of an additional issue in respect of invalidity of Defendant's registered trademark/impugned mark. Plaintiff contends that it learnt about the registration of the impugned mark, in October 2016, when Defendant filed IA No. 13657 of 2016 to amend its Written Statement. Originally, in its unamended written statement, Defendant had claimed that they are using "NATURE FRESH" in a descriptive sense and not as a trademark. Thereafter in the amended written statement, it was claimed that the impugned mark has been registered. Plaintiff prays that it is necessary to frame an additional issue regarding the invalidity of the Defendant's trademark registration in order to avail the remedy of rectification. In support of his submission reliance has been placed on the decision of the Supreme Court in Patel Field Agencies & Another v. P. M. Diesels Ltd. &Ors., 2018 2 SCC 112.