MAN MOHAN SHARMA Vs. MANJIT SINGH

JUDGEMENT

(1.) Defendant is in appeal arising out of an application for injunction, under Order 39 Rules 1 and 2 of the Code of Civil Procedure (CPC). Vide order being assailed, dated 02.08.2016, rendered by the Additional District Judge, Amritsar, defendant has been injuncted from infringing/imitating plaintiff's registered trade mark MOHUN'S and from using the impugned identical trade mark MOHAN'S, as also any other trade mark, which is, in any way, deceptively similar or identical thereto in respect of biscuits, cakes, dry fruit cakes, pastries etc. And, from committing any unlawful acts of infringement and passing off the aforesaid goods as that of the plaintiff. And, has also stayed the suit under Section 124 of the Trade Marks Act, 1999 (for short, 'the Act') till the final disposal of the rectification proceedings, initiated by the defendant, before the Intellectual Property Appellate Board (IPAB). Thus, the appeal. Parties to the lis, hereinafter, shall be referred to by their original position in the suit.

(2.) Briefly, the case set out by the plaintiff is that he is the sole proprietor of the firm, namely, M/S MOHUN'S BAKERY PRODUCTS. Plaintiff is engaged in the business of manufacturing and selling various kinds of biscuits, cakes, dry fruit cakes, pastries, buns etc. since 1975. Plaintiff firm had adopted a distinctive trade mark "MOHUN'S" (in label form) in the year 1975. Subsequently, in the year 1978, plaintiff firm adopted the trade mark " MOHUN's " in another distinctive label. Since then, plaintiff has been regularly using the trade mark MOHUN'S in respect of the aforesaid goods, and has made it popular and distinctive among the members of the trade/business, and public at large. Firm of the plaintiff was/is registered under the Punjab Vat Act, 2005, as also under the Central Sales Tax Act, 1956. Plaintiff's trade mark "MOHUN'S" forms a prominent part of his trade name M/S MOHUN'S BAKERY PRODUCTS, which are synonymous to each other. On account of prior adoption and extensive use of the said trade mark, plaintiff has gained such an enviable goodwill and reputation, that good of the same kind and/or description, and/or any other cognate/allied goods, bearing the aforesaid trade mark or any identical/deceptively similar trade mark are considered and deem to be belonging to the plaintiff firm. Thus, plaintiff is the first and prior adopter, user, promoter and the lawful proprietor of the trade mark "MOHUN'S" . And, has thus acquired proprietary rights as regard its usage under the Common Law. Further, with a view to acquire the statutory rights, plaintiff also secured registration (Registered TM No.396139, dated 07.10.1982) of his trade mark "MOHUN'S", under the Trade and Merchandise Marks Act, 1958. And, later in association with his registered trade mark, and in respect of the enlarged specification of the goods, plaintiff moved a fresh application, dated 10.10.2008, seeking registration of his afore-indicated trade mark, claiming user since 01.01.1978, under the Act. Application of the plaintiff was advertised, and for no opposition proceedings were lodged, the Registrar of Trade Marks registered the mark of the plaintiff (Registered TM No.1741875) vide certificate dated 10.10.2008, relating back to the date of his application i.e. 10.10.2008. And, the said registration still persists and is valid. That being so, no one else is authorised to use the plaintiff's registered trade mark "MOHUN'S" and/or identical/deceptively similar trade mark in relation to the goods for which plaintiff's trade mark is registered, without leave or consent of the plaintiff. However, in April, 2014, plaintiff came to know that defendant's firm M/s Salty Food Products has also commenced business of same kind/description of goods i.e. biscuits, namkeens, variety of packaged snacks etc., falling under Class 30, under an identical/deceptively similar trade mark i.e. MOHAN'S. That adoption and use of the identical and/or deceptive/similar trade mark by the defendant for the same description of goods, is a slavish imitation of the plaintiff's prior used and registered trade mark, which amounts to infringement under Section 29 of the Act. Further, the defendant by mala fide adoption and use of an identical and/or deceptively similar trade mark, is not only passing off his goods and business as those of the plaintiff, but also diluting plaintiff's goodwill and reputation. Thus, the suit.

(3.) In defence, it was pleaded, inter alia, by the defendant that he was/is trading under the name and style: M/s Salty Food Products, a proprietorship concern, which has its office at WZ-413/B, Sri Nagar, Rani Bagh, Delhi. Defendant is a manufacturer and merchant/trader of packaged bakery food products such as rusks, biscuits, cookies, other confectionery items and namkeen. Defendant is using the mark MOHAN'S in respect of variety of packaged snacks and products, falling under Class 30, in a very distinct packaging. Defendant had conceived, adopted and applied for its brand/mark MOHAN'S from his name Man Mohan Sharma. Earlier, the defendant had applied for registration of his mark MOHAN'S under application No.865401, dated 13.07.1999, claiming user since 01.01.1999, in respect of "Namkeens of all Kind in class 30". Since then, his business grew, and now defendant is manufacturer/ trader/ exporter of biscuits, namkeens, rusks, sohan papdi, gulab jamun, rasgulla etc. in India as well as abroad. Defendant has also acquired the mark MOHAN'S under trade mark application No.1774982, dated 16.01.2009, in Class 30 by way of assignment deed dated 22.05.2014, claiming user since 17.12.1990. The assignment request of the defendant was granted and the said application has since been advertised in the name of the defendant in the Trade Mark Journal. Plaintiff has instituted the suit on the purported infringement of his trade mark MOHUN'S , however, the defendant has challenged the registration of the said mark, vide rectification application No.ORA No.208/2014/TM/DEL, which is pending before the IPAB. Thus, the suit is required to be stayed. The mark/expression MOHAN'S was/is inherently non-distinctive, and thus there was no question of its acquiring a secondary meaning qua the products of the plaintiff. And, plaintiff was/is not the prior user/adopter of the impugned mark, for the trade mark containing identical expression "MOHUN'S" i.e. MOHUNS PURE MALT VINEGAR (Registered TM No.262401) and MOHUNS TOMOTO Ketchup (Registered TM No.262402) were applied for the first time, in Class 30, by Mohan Meakin Limited on 05.02.1970, claiming user since September, 1963. The impugned mark was registered in grave contravention of the provisions of the Act, for the restrictions subject to which it was to be advertised were never fulfilled. Further, nothing was placed on record to show that mark MOHUN'S was ever adopted or put to use by the plaintiff. Therefore, the suit be dismissed with exemplary costs.