TMI Blog2009 (5) TMI 983X X X X Extracts X X X X X X X X Extracts X X X X ..... r allied goods under the trade mark HARA QILLA or the device of QILLA or any mark or device deceptively similar to the plaintiff's aforementioned registered trade marks. 3. In this appeal the parties are referred to by their status in the suit. Accordingly the Appellant is referred to as the plaintiff and Respondents 1 and 2 as the Defendants 1 and 2. 4. The case of the plaintiff is that it is engaged in the selection, processing and merchandising of rice since 1952. In the year 1954 the plaintiff adopted GOLDEN QILLA (words per se) and the device of QILLA as its trade mark so as to indicate its connection in the course of trade with the goods of its selection, process and merchandise and also as a proprietor thereof. In the year 1961, it adopted LAL QILLA (words per se) and also the device of LAL QILLA as its trade mark to indicate its connection in the course of trade with the goods of its selection, manufacture and sale and also as a proprietor thereof. Likewise in 1977, it adopted NEELA QILLA (words per se) and the device of QILLA as its trade mark. According to the plaintiff it has used the aforementioned marks continuously and extensively in the course of its trade ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... awful trade activities of the Defendants. 9. The plaintiff came to know in 1986 through an advertisement in the newspaper 'Vyapar Kesri' about the Defendants having adopted the mark of HARA QILLA and the device of QILLA in connection with the rice being sold by them. The plaintiff immediately served a notice dated 13th March, 1986 cautioning the defendants from using the said mark and device. However, the Defendants did not raise any claim against the averments made in the notice. The goods of the Defendants under the impugned marks disappeared from the market. However the plaintiff was surprised to notice an advertisement of the Defendants' application under No. 435166 in the Trade Marks Journal No. 958 dated 1st May 1989 for registration of the HARA QILLA and device of QILLA in respect of rice. The plaintiff immediately filed an opposition before the Registrar of Trade Marks on 8th May 1989. As on the date of filing the suit the said opposition was pending. The plaintiff also learnt that the Defendants have restarted marketing the rice under the impugned marks with impunity and therefore the suit was filed. 10. In the aforementioned suit IA No. 622 of 1989 was f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... LA, LAL QILLA, NEELA QILLA for a number of years prior to the filing of the suit shows that the plaintiff had developed a 'family of marks' on the ground that merely because a mark belonged to a 'family of marks' it was not exempt from the standard test of trade mark protection. 13. On behalf of the plaintiff it was contended that the Defendants had actually failed to indicate how they came across the words 'HARA QILLA' and the device of QILLA if indeed Defendant No. 1 was in the trade of marketing rice since 7th December 1978. It is pointed out that Defendant No. 1 made an application for registration of its mark and device only in 1989. It was therefore submitted that the use of the mark HARA QILLA and the device QILLA cannot be said to be an honest. It is further submitted that the use cannot also be said to be concurrent since no bills or invoices had been produced by the Defendants to show that they were using the marks since 1978. It was submitted that the mere fact that this appeal had been pending for over 12 years should not be a reason ground to reject the prayer of the plaintiff for an interim injunction since the impugned order was Constitutin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The Defendants relied on the decisions in Power Control Appliances v. Sumeet Machines Pvt. Ltd 1995 PTC 165, Bali Trade Mark (No. 2) Fleet Street Reporter [1978] 193 to contend that honest and concurrent user by the defendants of the registered marks of the plaintiff would justify the refusal of injunction to the plaintiff. Learned Counsel for the Defendants relied upon the observations in Power Control Appliances to contend that the delay and laches in the plaintiff approaching the Court for relief could be fatal to its case for grant of injunction. It was contended that the appropriate order for this Court was to expedite the trial of the suit itself. 15. The submissions of the parties have been considered. It is not in dispute that the plaintiff has in its favour registration of the four marks and devices as noticed hereinbefore. The suit filed by the plaintiff is essentially one for infringement in respect of the plaintiff's trade mark on the ground that the use by the Defendants of the mark and device HARA QILLA and QILLA respectively would cause confusion and deception among the users and the trade in general. The distinction between a suit based on infringement and t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. It was emphasized that the whole word had to be considered. It was held that the overall similarity between the two names in respect of the same description of the goods would likely to cause confusion within the meaning of Section 10(1) of the Trade Marks Act, 1940. 17. In the instant case as far as the registered marks in favour of the plaintiff are concerned, applying the test laid down in Kaviraj Pandit it is seen that the essential feature of the mark is the word 'QILLA'. Whether the word is spelt as QILLA or KILLA, or even written in a different style or colour combination. To the customer who seeks to purchase the QILLA brand rice both names would sound phonetically similar. The customer is likely to ask the retailer: Can I have the QILLA brand rice? In the considered view of this Court, it is this essential feature of the plaintiff's mark, i.e. the word QILLA, which has been adopted by the Defendant No. 1. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... depiction of a fort would have to be supported by its showing how it got inspired to use those words. It is not possible therefore to accept the plea of the Defendants that in the instant case, there was an honest concurrent use. The legal position was succinctly explained by the House of Lords in Alex Pirie Sons' Application (1933) 50 R.P.C. 147 where it was held as under: Secondly, the appellants say, and this is their main line of attack upon the conclusion of the Court of Appeal, that though the respondents were honest in their user in the sense that they never intended to cause confusion or to pass off their goods as the goods of the appellants, yet inasmuch as they knew of the appellants' mark when they adopted their own and that the marks have been used on the same goods in the same market, the user of the respondents' mark cannot be treated as honest within the meaning of the section and that in any case by refusal of registration there would not in these circumstances be the hardship to the respondents which the section is intended to prevent. My lords, it has never been suggested throughout this case that the conduct of the respondents has in the sligh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nterim injunction is granted, the effect is that goods bearing the infringing mark or spurious goods would continue to be sold in the market. After a number of years when the case is finally disposed of, after trial, and the plaintiff succeeds and gets a permanent injunction then, possibly, the plaintiff may also be compensated by his being awarded damages or an account of profits, that sense of the non-grant of the interim injunction would not ultimately, prejudice the plaintiff for he may be compensated with payment of money but during this period when the defendant is allowed to continue to infringe the intellectual property it is the consumer or the purchaser who alone suffers and who ultimately cannot be compensated. Therefore, in order to curb the menace of manufacture, production and sale of spurious goods and the blatant violation of intellectual property it will be proper for the court to take into consideration the interest of the general public. In this regard reference may usefully be made to the following observations of Mc CARTHY at page 346, para 30.21 which deals with the protection of third parties; Some courts also consider the necessity of protecting third parti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ngement by the Defendants of the plaintiff's marks and device by marketing the defendants' product under the mark HARA QILLA and the device of QILLA is a continuing one and has the effect of harming the plaintiff's reputation and eroding its goodwill in the trade. It is clarified that the observations in this order are prima facie and not intended to influence the opinion to be formed by the trial court on an appreciation of the evidence led by the parties. 25. Before concluding a reference may be made to an application being CM No. 842 of 2001 filed by the plaintiff. In the said application it is pointed out that against the order dated 29th December 1993 passed by the Registrar Trade Marks accepting the opposition filed by the plaintiff to the grant of registration in favour of the Defendant in respect of HARA QILLA the Defendants had filed CM (Main) No. 165 of 1995 in this Court. By an order dated 30th October 1998 the learned Single Judge dismissed the said application/appeal. A second appeal against the said order was dismissed by the Division Bench on 19th January 2001 and therefore the order dated 29th December 1993 passed by the Assistant Registrar of Trade M ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
