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2016 (3) TMI 834 - DELHI HIGH COURT

2016 (3) TMI 834 - DELHI HIGH COURT - TMI - Infringement of Trademark - injunction application - prayer made to restrain Hamdard from selling the herbal sweeten syrup, using the trademark 'HAMDARD JAM-E-SHIRIN' - Held that:- We have noted the rival arguments, but would not be dealing with the same, for the reason suffice it to capture the rival arguments and bring home the point that the arena of debate is rich with arguments on either side and therefore without pleadings by Hamdard it is not a .....

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into account that Hamdard is a registered proprietor of the trademark which is under challenge for the reason the law is that in an action for passing off, where the defendant is the registered proprietor of a trademark, the slope to be climbed by the plaintiff has a high degree of incline, and for which documents have to be scrutinized and prima-facie opinion formed.

It is not a case where an ad-interim injunction must ensue forthwith. The full debate needs to be postponed till Hamda .....

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which we take on record that the appellant has supplied to learned counsel for Hamdard the suit plaint, application for interim injunction and all documents relied upon and as filed along with the plaint. - FAO (OS) (COMM) 1/2016, CM Nos.4969-71/2016 - Dated:- 29-2-2016 - Pradeep Nandrajog And Mukta Gupta, JJ. For the Appellant : Mr.Sudhir Chandra, Sr. Advocate instructed by Mr.Heman Singh, Ms.Mamta Jha, Mr.Shashi Ojha, Ms.Ambika Gautam and Mr.Pranav Narain, Advs. For the Respondent : Mr. Pravin .....

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pleading that by selling its product under the trademark 'HAMDARD JAM-E-SHIRIN', Hamdard was guilty of passing off its product as that of Qarshi. The product is a herbal beverage decocted from pure herbs and natural ingredients and sweeten with sugar. As per Qarshi, it has been selling the beverage since the year 1980 and has its presence in India through sale of its product in the physical market as also on the net, evidenced by invoices filed by Qarshi. Relying upon broadcast of comme .....

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train Hamdard from selling the herbal sweeten syrup, using the trademark 'HAMDARD JAM-E-SHIRIN'. 3. Placed before a learned Single Judge of this Court, issuing summons in the suit, upon the condition that being a foreign entity and having no tangible assets in India, Qarshi should furnish security of the value of ₹ 10,00,000/- (Rupees Ten Lakhs only), summons were issued to Hamdard but ex-parte ad-interim injunction was declined; reasoning that the mark 'JAM-E-SHIRIN' is hi .....

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there is no clause (d) in sub-Section (1) of Section 9 of the Trademarks Act, 1999. The learned Single Judge has obviously referred to clause (b). 4. Qarshi is in appeal with a grievance, which is concededly correct, concerning the meaning assigned by the learned Single Judge to the word JAM and SHIRIN in Urdu language. The learned Single Judge has ascribed the meaning drink and something having cooling effect to the two words respectively. It admits of no doubt that in Urdu the word JAM means .....

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M-E-SHIRIN to mean any particular thing because the words JAM and SHIRIN, though generic in Urdu language, and therefore not descriptive of anything to the common man. The argument was that if a learned Judge misunderstood the meaning of JAM and SHIRIN, it would be intrinsic evidence of the common man not understanding the Urdu connotation of the words JAM and SHIRIN, admittedly having etymological root in Persian. 6. The appeal against the order dated January 27, 2016 declining ex-parte ad-inte .....

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o the exclusive use of the words 'JAM-E-SHIRIN' as also with no exclusive right to the word SHIRIN and with further condition that the word mark 'QARSHI KA JAM-E-SHIRIN', for which registration was granted, would be used along with word QARSHI KA and also with the letter E written between JAM and SHIRIN, which fact was not disclosed in the plaint, we had put it to learned senior counsel for Qarshi whether the appeal could be disposed of with a simple observation that the meaning .....

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disclosure that the trademark 'JAM-E-SHIRIN' was registered in Pakistan, without disclosing the disclaimers put as a condition by the authorities there. The Bench was of the opinion that proper pleadings were warranted and the prima-facie strength in the case of Qarshi was perhaps not of a kind where injunction must ensue as a matter of right. But Qarshi insisted for arguments to be heard and decision pronounced on merits. We therefore make it clear that the facts which we would hereina .....

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Hamdard was the registered proprietor of the trademark 'HAMDARD JAM-E-SHIRIN' was irrelevant, because Qarshi was in the market since the year 1980 and as regards Hamdard it had obtained registration of its trademark claiming user since the year 2008. Learned senior counsel urged that the words JAM and SHIRIN were words of Urdu and the Court should take judicial notice of the fact that a large segment of the population in India is not well-versed in Urdu and thus would not understand the .....

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suggestive but is still capable of being distinguished as a distinctive mark i.e. a suggestive mark may be distinctive. Said mark would be entitled to the same protection which is accorded to an arbitrary and a fanciful mark. Learned senior counsel took the argument forward by importing us back to the year 1930 when the Lahore High Court pronounced an opinion reported as AIR 1930 Lahore 999 Unani Dawakhana Vs. Hamdard Dawakhana in which the word mark 'SHARBAT ROOH AFZA' was opined to be .....

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; was not descriptive, the defendant could not turn back and say to the plaintiff that it cannot sue on a protection available to its trademark using the word 'JIVA' because the word was suggestive. We note that the word 'JIVA' would in Hindi mean a living being or life. Learned senior counsel referred to communication between Hamdard and the Registrar of Trademarks concerning 'JAM-E-SHIRIN' being descriptive and the possible stand of Hamdard that it was not descriptive. .....

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on with goods manufactured or sold or otherwise in relation to the trade. Summing up the submissions learned counsel urged that Qarshi was the prior user; it was the first in the world to market the product under the trademark 'JAM-E-SHIRIN'; it has advertised extensively in India and had spent money on the advertisements and had actually entered the Indian market in the year 2006. Relying upon the decision reported as AIR 1978 Delhi 250 Sanctuary Traders Vs. Roshan Lal Duggar, AIR 1995 .....

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1 Dimmer dot - Automatic Electric Vs. R.K.Dhawan, learned senior counsel urged that Hamdard having taken a stand before the Registrar of Trademarks that 'JAM-E-SHIRIN' was not descriptive could not turn back and say to Qarshi that it is descriptive. With reference to the decision of the Lahore High Court and an extract from McCarthy on Trademarks and Unfair Competition learned senior counsel urged that 'JAM-E-SHIRIN', though using Urdu words would not be descriptive in India. 9. .....

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Communication by the Trademark Registry in Pakistan to Qarshi that its trademark 'QARSHI KA JAM-E-SHIRIN' was registered with no right to the exclusive use of the words 'JAM-E-SHIRIN'; (ii) No exclusive right to the use of the words 'E' and 'SHIRIN'; (iii) No exclusive right in the word 'SHIRIN' separately and apart from the mark as a whole; and (iv) The condition that the mark shall be used along with 'QARSHI KA'. The argument would therefore be .....

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d not drink and SHIRIN meant sweet and not cooling effect, it would not mean that there is intrinsic evidence (on the reasoning that if a learned Judge misunderstood the meaning) that the words JAM and SHIRIN, though common words in Urdu language, would not be understood by the common man as descriptive of the goods i.e. describing a herbal syrup which is sweet. Learned counsel concluded by urging that Hamdard has the registration for the trademark 'HAMDARD JAM-E-SHIRIN' and has marketed .....

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party claiming injunction must disclose i.e. disclaimers made by it in Pakistan for the reason this issue itself needs a full debate after pleadings are completed. We do not comment upon whether the documents filed by Qarshi would entitle it to an injunction against Hamdard in an action for passing off taking into account that Hamdard is a registered proprietor of the trademark which is under challenge for the reason the law is that in an action for passing off, where the defendant is the regis .....

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