Manmohan Singh, J.@mdashBy this common order I propose to dispose of two pending applications filed by the parties i.e. application being I.A. No. 15532/2011 which has been filed by the plaintiffs under Order XXXIX Rules 1 & 2 Code of Civil Procedure, 1908 read with Section 151 of CPC and the defendants? application being I.A. No. 18390/2011 under Order XXXIX Rule 4 CPC for vacation of ex-parte interim order granted by the court on 26.09.2011.
2. The case of the plaintiffs is that plaintiff No. 1 is the registered proprietors of the trade name/trademark RASNA and its variants in India in various classes under the provisions of The Trade marks Act, 1999 (hereinafter referred to as the Act) the details of which are given in para 5 of the plaint. It is also stated that apart from over 100 registrations of the mark RASNA in India, the plaintiff No. 1 is also holding the registration of the trade mark RASNA and its variants in many foreign countries as the plaintiffs have also been marketing and exporting goods under the said Trade Mark. The details of these trademarks have been provided in para 6 of the plaint.
3. The said trade mark RASNA is being used since 1972 in respect of soft-drink concentrates which is popular among all classes of consumers which has acquired unique goodwill and reputation. The Trade Mark RASNA is a rare word which was adopted honestly.
4. Thus, the plaintiffs are the proprietors of the Trade Mark and also the owner of copyright of the title RASNA represented in the style which is unique and amounts to original artistic work within the meaning of Section 2(c) of the Copyright, Act 1957.
5. The case of the plaintiffs? against the defendants is that in 2011 the plaintiffs came to know that the defendants are selling their tobacco products under the trademark PAN RASNA which is deceptively similar to the plaintiffs? well known mark RASNA. The mark RASNA is also registered in favour of the plaintiffs for the same products in which the defendants are dealing and therefore also amounts to infringement of the plaintiffs? trademark. According to the plaintiffs, the defendants are doing so, with mala fide intentions to cash upon the reputation and goodwill of the plaintiffs.
6. It is stated by the plaintiffs that the use of the trademark RASNA for selling tobacco products is against the public policy as it would mislead the young generation who is used to buying RASNA products to buy tobacco products which are harmful for health and would also affect the distinctiveness of the trade name/trademark of the plaintiffs.
Therefore the plaintiffs have no option but to file the present suit for permanent injunction restraining infringement of trade name/trademark, passing off, delivery up, rendition of accounts of profit and damages etc. Alongwith the suit, the plaintiffs also filed an application under Order XXXIX Rule 2 CPC seeking ad-interim injunction restraining the defendants.
7. The present suit along with the instant application under Order XXXIX Rules 1 & 2 read with Section 151 of CPC was listed before the court of 26.09.2011 and on that the court granted ex parte ad interim injunction in favour of the plaintiffs. The relevant portion of the said order dated 26.09.2011 reads as under:
Heard counsel for the plaintiffs and also perused the plaint, application and the documents filed along with the plaint. I am satisfied that it is a fit case for grant of ex parte ad interim injunction. Accordingly till the next date of hearing, the defendant, their proprietors, partners, principal officers, servants, agents are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in tobacco products, edible products and related cognate or allied goods using the trade mark PAN RASNA or any mark/name, which is deceptively similar to the plaintiffs trade mark/trade name RASNA.
8. The court further appointed local commissioners to visit the premises of the defendants and seize and seal all the infringing goods. The Local Commissioners visited the premises of the defendants at Mumbai and in Delhi on 04.10.2011 and seized impugned products of the defendants.
9. On 21.11.2011 the defendant Nos. 1 to 3 filed I.A. No. 18390/2011 under Order XXXIX Rule 4 for vacation of the order dated 26.09.2011 of interim injunction. In the application it is stated by the defendants that they are a well established group of companies since over five decades they have been exporting un-manufactured leaf tobacco to over 75 countries. The defendants have pioneered hookah retailing in India with defendant No. 3 providing a wide array of hookahs sourced from around the world and a variety of assorted flavours of tobacco molasses under the brand name ''AFZAL''. According to the plaintiffs, for the past several years, the brand name ''AFZAL'' has been registered as a trademark in various classes including class 34 by M/s Sopariwala Exports Group of Companies, which has not been made a party to this suit.
10. As per the defendants, �PAN RASNA� is not a trademark and is only one of the many flavoured tobacco being sold under the trademark ''AFZAL'' in the showrooms of defendant No. 3, hookah bars and other specified outlets where only tobacco, hookah/shishah and other related products.
11. The said tobacco related products and the packaging bear the mark ''AFZAL'' in larger font than the term PAN RASNA. The plaintiff is not using the said goods. The alleged registration obtained by the plaintiff No. 1 in the same class is bad and is liable to be rectified u/s 47 of the Act on account of non user, therefore, no case of infringement of trade mark or passing off is made out.
12. It is further stated by the defendants that they are engaged in the manufacturing/selling of tobacco products. ''PAN RASNA'' is one of the many quality mark manufactured/sold by the Defendants. Use of their packaging of the product, it is evident that the term ''PAN RASNA'' is being used alongwith the brand name "Afzal". The labelling, packaging and the entire trade dress of their products is under the trademark "AFZAL" which is prominently indicated. The consumers and public at large are well aware of the products of the defendants and identify the same as AFZAL being fully conscious of the fact that the additional terms used such as apple/strawberry/mint/�PAN RASNA� only describe and indicate the flavour. Hence there is no confusion and deception in the market with the products of the Plaintiff as two channels are totally different. The Plaintiffs are primarily into food/beverages related products whereas the Defendants are engaged in manufacturing of tobacco related products. The product having the flavour ''PAN RASNA'' is being sold at retail item in the shops/outlet of the Defendants. Hence it cannot be said that the product of the Defendants ''PAN RASNA'' can in any manner is passed off as the product of the Plaintiffs.
13. Mr. Sudhir Chandra, learned Senior counsel appearing on behalf of the defendants also argued that defendants are not using �PAN RASNA� as a trade mark at all, but are only using it as a flavour. Reliance in support has been placed on Nestle India Limited v. Mood Hospitality Private Limited; 2010 (42) PTC 514 (paragraphs 29 � 34), wherein the expression ''Yo'' was held not as a trade mark but only as a descriptive term and therefore the necessary ingredient of section 29(1) is missing.
14. According to Mr. Chandra, term �RASNA� is descriptive as �Rasna� means (1) tongue; (2) taste; (3) to feel delight, or ecstasy (Oxford Hindi � English dictionary). Hence, the term �PAN RASNA� describes the liking towards the flavour of Pan. The use of the term is, therefore, descriptive within the meaning of Section 35 of the Trade Marks Act, 1999 (Act) as the use of the Defendants is a bonafide which describes the character or quality of its goods.
Further, as per the provisions of Section 30(2)(a) of the Act, a registered mark is not infringed where the use in relation to goods indicates the kind, quality or other characteristics of the goods. The Plaintiff cannot therefore claim proprietary rights over a term which is descriptive and indicative of characteristic, nature or attribute of the product and which has become common to the trade. The Defendants rely on Cadila Healthcare Ltd v. Gujarat Co-operative Milk Marketing Federation Limited and Ors. 2008 (36) PTC 168 � paragraph 54.
15. It is further argued by Mr. Chandra that the plaintiffs just have a mere registration for the trade mark �Rasna� in Class 34 in relation to tobacco and related products. The said registration is under challenge as the defendants have filed rectification proceedings to rectify the same on the basis of non-use and which is likely to be allowed, therefore, the plaintiffs is not entitled for any protection or have any right to claim monopoly of the word RASNA and the ex-parte order is liable to be vacated.
16. The defendants are using the term �PAN RASNA� bonafidely for at least last 3 years continuously, openly and uninterruptedly. The plaintiff is not entitled to interfere with the bonafide and continuous and prior use of the defendants'' product with the term �PAN RASNA� as stipulated u/s 34(a) of the Act. The law on superiority of prior adoption and use of a trade mark viz-a-viz prior registration has been discussed in Century Traders v. Roshan Lal Duggar & Co. AIR 1978 Del 1978 250 at paragraph numbers 10 to 14.
17. Lastly it was argued by Mr. Chandra that the balance of convenience is in their favour because they are exporting unmanufactured leaf tobacco to over 75 countries since over five decades. The defendants are suffering on a day to day basis by operation of the order dated 26.09.2011. The goods worth as about 500 samples of the goods have been seized and goods worth about Rs 1.65 crore are held up as the same cannot be sold by operation of the order dated 26.09.2011. The plaintiffs on the other hand are in no way effected by the sale of the defendants'' products bearing �PAN RASNA� and no prejudice, harm, loss and injury is being caused to the plaintiffs in case the interim order is vacated.
18. The following are the points under consideration in order to decide the pending applications:
(a) Whether by use of mark PAN RASNA/RASNA in relation to tobacco product, the defendants are committing infringement of plaintiffs? registered trade mark which was admittedly not used by the plaintiffs in relation to the similar products of the defendants and whether the defendants are guilty of passing off their goods as that of the plaintiffs.
(b) Whether the defendants are using the mark RASNA in the manner which can be considered as such use is merely to describe as one of their flavours.
(c) Whether the balance of convenience lies in favour of the defendants in view of submissions made by defendants and which party will suffer incase the interim order granted would continue.
19. In order to determine the controversy raised, the specimen of user made by the defendants of their products are reproduced herebelow:
20. Admittedly, PAN RASNA is one of the flavours of the defendants. The details of 47 flavours in relation to their products are given as under:
(i) Apple
(ii) Strawberry
(iii) Mixed Fruit
(iv) Aniseed
(v) Double Apple
(vi) Pineapple
(vii) Watermelon
(viii) Mint
(ix) Mango
(x) Grapes
(xi) Golden Amber
(xii) Silver Fox
(xiii) Red Cherry
(xiv) Peach
(xv) Rose
(xvi) Lime N Lemon
(xvii) Orange
(xviii) Black Berry
(xix) Blue Berry
(xx) Mintos
(xxi) Guarana
(xxii) Raspberry
(xxiii) Cardamom
(xxiv) Coffee
(xxv) Pudina
(xxvi) Coconut
(xxvii) Sweet Melon
(xxviii) Black Liquorice
(xxix) Chocomint
(xxx) Vanilla
(xxxi) Rooh Afza
(xxxii) Lychee
(xxxiii) Sweet Lime
(xxxiv) Pinacolada
(xxxv) Bubble Gum
(xxxvi) Guava
(xxxvii) Pan Rasna
(xxxviii) White Grapes
(xxxix) Honey
(xl) Apricot
(xli) Banana
(xlii) Cinnamon
(xliii) Cola
(xliv) Spearmint
(xlv) Chocolate
(xlvi) Green Mango
(xlvii) Bombay Pan Masala
21. It appears from the Item No. xxxvii above that the defendants are using one of flavours PAN RASNA. They are also using the word ROOH AFZA which is mentioned at Item No. xxxi as one of the flavours which is not the subject matter of the present suit.
Infringement of Trade Marks
22. As already stated, the trade mark RASNA is being used by the plaintiffs for the last 40 years in respect of soft drink concentrates. It is a registered trade mark in relation to various goods other than concentrates included Pan Masala and tobacco, though the plaintiffs have not used the mark in relation to goods tobacco products as used by the defendants. The following rights are conferred by means of registration under various provisions of the Trade Marks Act, 1999:
Section 28. �Rights conferred by registration:-
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Section 31 of the Act reads as under:
31. Registration to be prima facie evidence of validity.�
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications u/s 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark u/s 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.
23. The law relating to infringement of a registered trademark has been envisaged u/S 29 of the Trade Marks Act, 1999 and exclusive rights granted by virtue of registration u/s 28 which reads as under:-
29. Infringement of registered trademarks�
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of-
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect f which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
24. By mere reading of these provisions, it is clear that if a registered trademark is infringed by a person who not being a registered proprietor, uses in the course of trade a mark which is identical or deceptively similar in relation to the goods or services which are identical or similar to that in respect of which the trademark is registered without the permission of the trademark owner.
25. It is settled law that in order to prove the case for infringement of trade mark in respect of deceptively similar mark, the plaintiff has to show that the essential features of the registered trade mark which has been adopted by the defendant has been taken out from the plaintiffs registration and under these circumstances, only the marks are to be compared by the Court and in case the Court comes to conclusion that the two rival marks are either identical with or deceptively similar, the case of infringement is made out. The following are the judgments which are relevant to be referred for the purpose of infringement of the trade mark:
i.
The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods
if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the make would be immaterial
ii.
When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction....
iii. National Bell Co. v. Metal Goods Mfg. Co. AIR 1971 SC 898 at page 903 it was held as under:
On registration of a trade mark the registered proprietor gets u/s 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trade mark.
iv. M/s Avis International Ltd. vs. M/s Avi Footwear Industries and another, reported in AIR 1991 Delhi 22,the relevant paras of which read as under:
14. At this stage of the case, we have no affidavit against another affidavit, and in view of the statutory provisions of Ss. 28 and 31 of the Trade and Merchandise Marks Act, it would be appropriate to rely upon contentions of the plaintiffs.
17. In my view, the statutory monopoly which has been conferred upon the plaintiffs in connection with use of the mark AVIS for any other consideration in relation to grant or non-grant of an injunction, especially when the matter is at an interlocutory state, and is yet to be tried, and it cannot be foreseen as to whether the defendants who seek rectification of the plaintiffs mark, on account of nonuser would be able to prove their case. The statutory registration establishes prima facie case in favour of the plaintiffs.
18. In this view of the matter, I think that the balance of convenience would be in favour of the plaintiffs, to ensure that by concurrent user, during the period of the trial, no other rights come into existence. In my view, it is very convenient, if the defendants are so minded, to adopt any other label that establishes a connection in the course of trade with respect to the footwear manufactured by them.
Essential Features
26. The essentials of passing off action in Halsbury''s Laws of England Vol. 38 (3rd Edition) para 998 as given below are worth noting:
998. Essentials of the cause of action
The plaintiff must prove that the disputed name, mark, sign or get up has become distinctive of his goods in the sense that by the use of his name or mark, etc. in relation to goods they are regarded, by a substantial number of members of the public or in the trade, as coming from a particular source, known or unknown; it is not necessary that the name of the plaintiff''s firm should be known ....The plaintiff must further prove that the defendant''s use of name or mark was likely or calculated to deceive, and thus cause confusion and injury, actual or probable, to the goodwill and the plaintiff''s business, as for example, by depriving him of the profit that he might have had by selling the goods which ex hypothesis, the purchaser intended to buy. Thus, the cause of action involves a combination of distinctiveness of the plaintiff''s name or mark and an injurious use by the defendant of the name or mark and an injurious use by the defendant of the name or mark or a similar name or mark, sign, picture or get-up does or does not amount to passing off is in substance a question of evidence; the question whether the matter complained of is likely to deceive is a question for the Court.
28. As regards the essential features of the mark RASNA is concerned, as alleged by the plaintiffs, the Division Bench of this Court in the case of M/s. Atlas Cycle Industries Ltd. vs. Hind Cycle Ltd. has dealt with some issues in great details. The finding given by the Bench are reproduced as follows:
(a) "In an action for an alleged infringement. of a registered trade mark. it has first to be seen whether the impugned mark. of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement. If the mark of the defendant is not identical, it has to be seen whether the mark of the defendant is receptively similar in the sense I hat it is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got his mark registered. For that purpose, the two marks have to be compared, ''not by placing them side by side. but by asking itself whether having due regard to relevant surrounding circumstances, the defendant''s mark as used is similar to the plaintiff''s mark as it would be remembered by persons possessed of an average memory with its usual imperfections'', and it has then to be determined whether the defendant''s mark is likely to deceive or cause confusion".
(b) In Taw Manufacturing Coy. Lid. v. Notek Engineering Coy. Ltd. and another-. (1951) 68 RPC 271(2), the monopoly right claimed under the registered trade mark related to Motor Lamps and consisted of a pictorial device and the word "Taw". The device comprised of a representation of the full-faced view of a cat''s head, wherein the eyes were drawn in. the form of a motor ear headlamps and the whole was superimposed upon an open body motor ear viewed from the front in a manner as to substitute the cat''s head for She bonnet and radiator as normally seen. The device that was the subject matter of challenge consisted of a square panel with informative particulars printed below. The panel depicted a full-faced view of a cat''s head with the eyes drawn as motor car headlamps, beneath which was the caption "Let Notek be your eyes in fog and darkness". The disposition and lettering was such as to lead the render to lake particular notice of the device with the word "Notek" beneath it. The question for decision was whether there was infringement by the latter device of the former registered trade mark. The Court held:
A trade mark is infringed if a person other than the registered proprietor or authorised user uses, in relation to goods covered by the registration, one or more of the trade mark''s essential particulars. The identification of an essential feature depends partly upon the Court''s own judgment and partly upon the burden of the evidence that is placed before the Court.
29. In the case of
30. In passing off action, it is held in various cases include in the case of
31. In the case of
The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that his goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
In this case, the Apex Court further observed that:
Where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
32. In the case of B.K. Engineering Co. Vs. Ubhi Enterprises and Anr. reported in 1985 PTC 1, Para-57, it was held as under:
Trading must not only be honest but must not even unintentionally be unfair.
33. Further contention of the defendants is that the term Pan Rasna describes as one of the flavour of Pan only, it is descriptive of the character or quality of his goods, thus, the claim of the defendant is protected u/s 35 read with Section 30(2)(a) of the Act as the same is indicative of characterstic nature or attribute the product. As far as the provisions referred by the defendants are concerned, no doubt incase the defendants are using the term or word which is descriptive and the defendants describe the same in the nature or attribute the product, the same is permitted by the said provisions. However, the court has to examine the present case as per facts available on record and user of the term by the defendants in the manner while seeing the products itself.
34. Before coming to the conclusion on this question, let us examine the meaning of mark and trade mark. Relevant Section 2(1)(m) of the Act reads as under:
Section 2(1)(m)
mark includes a device, brand, heading, lable, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. The word �RASNA� though may mean tongue and ecstacy in Hindi, but, by virtue of long and continuous usage and the popularity enjoyed by it, the mark RASNA has acquired secondary significance and is only associated with the plaintiffs and no one else.
Section 2(zb) reads as under :
"trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colours , and in relation to Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark, and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
35. A mere reading of the meaning of mark and trade mark indicates that any word which is registered trade mark used in relation to goods or services for the purpose of indicating in the course of trade as the case may be and some person having the right as proprietor to use the mark. In the present case, the plaintiffs claim to have used the mark RASNA in relation to soft drink concentrate for the last 40 years, the same has been protected from time to time. It is also registered in relation to tobacco in Class 34. Therefore, prima facie, it cannot be declared that the mark RASNA could not be protectable.
36. It is also pertinent to mention here that the manner of use by the defendants, it cannot be said that they are merely using the same in order to describe their products. Rather, the use of the defendants shows and they are using as a sub-brand. Therefore, the decisions referred by the defendants are not applicable in the facts of the present case.
37. The decisions referred to by the defendants, i.e., Nestle India Limited v. Mood Hospitality Private Limited (supra) and Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. and Ors. (supra), do not help the case of the defendants. In the first case, the learned Division Bench in para 40 of the judgment has clearly come to the conclusion that there is nothing on record to establish, even prima facie, that the latter trade mark has been so continuously or extensively used that it has developed a reputation in India. In para 41, there is also finding given by the learned Division Bench that there is a plausible explanation given by the appellant, therefore, it cannot be said that the mark �Yo� was used without due cause and mere use of the word �Yo� would not bring it within the mischief of clause (c) of section 29(4).
38. In the second case, the mark Sugar Free was used by the plaintiff for the products which substitutes sugar free and the defendant was allowed to use the word �Sugar Free� only in its descriptive sense and not as a trade mark. The said situation is missing in the present case.
39. In the present case, the mark RASNA is a registered trade mark of the plaintiffs which is being used by them for the last forty years and it has acquired goodwill and reputation as per the material placed on record. The said trade mark has also been protected from time to time. After having examination of defendants? products which are scanned and are shown in para 19 of my order, prima facie establishes that the defendants intend to use it as a sub brand and not in descriptive sense. Thus, the present case and the cases referred to by the defendants are materially different.
40. From the above, it is clear that the use of the mark RASNA by the defendants as a name or sub-mark amounts to infringement even if the registered trade mark is not used by the plaintiffs as there is no requirement of user under the provisions of infringement of trade mark or conferring the exclusive rights granted by virtue of registration, non user is a one of the defence which may be considered by the courts while deciding the interim application. It is a practice in law that till the time the registered trade mark is entered in the register, no one is entitled to infringe the same unless the court comes to the conclusion the mark adopted and used by the defendants is covered within the meaning of Section 30 and 35 of the Act and such user is not made in bad faith.
41. In the present case, RASNA is prima facie cannot be said to be descriptive mark in view of the averments made by the plaintiffs in the plaint and documents placed on record. At the most the word RAS in relation to soft drink concentrates can be suggestive word which describe the character and quality of the goods. Mr. Praveen Anand, learned counsel appearing on behalf of the plaintiffs gave proposal to settle the matter and his clients have no objection if the defendants may amend the use of mark PAN RAS instead of RASNA. The suggestion given by the plaintiffs was not acceptable to the defendants.
Conduct of the defendants
42. It is not understood as to why the defendants have chosen the mark RASNA in relation to tobacco products when the defendants have already had the mark BOMBAY PAN as one of the flavours. It is also surprised to note that the defendants are using the name Rooh Afza which is the known Trade Mark of Hamdard Dawakhana. It appears to the court that these names are used by the defendants in order to impress the customers that the defendants have some association with these companies. Incase the defendants are allowed to use the name RASNA, tomorrow they will use the name PAN PEPSI/PAN LIMCA/PAN AQUAFINA etc. as other flavours. The products in question already contain the warning that �it is injurious to health� and it causes cancer. The mark which has already acquired residual goodwill and reputation if used by another party other than real owner, there would be fair chances of danger of tarnishment and dilution of the same, otherwise, Hukkah tobacco manufactured by the defendants do not have either the PAN RAS ingredient or any content which can cure the soul as the defendants are using the expression ROOH AFZA. The said claim of the defendants in nature of flavour gives in the indication of False Trade Description and is untrue within the knowledge of the defendants.
43. In my view that there is hardly any hardship to the defendants incase the interim order granted would continue. The balance of convenience also does not lie in favour of the defendants. If the defendants are allowed to use the name RASNA or part of PAN RASNA, no doubt the plaintiffs will suffer irreparable harm not only financially but also to their goodwill and reputation. Thus, the adoption of the said name is not with bonafide intention but it appears that it was deliberate with malafide intention on the part of defendants in order to take the advantage of known trade mark in the market.
44. As far as the existence of stock is concerned as well as the goods seized by the Local Commissioner which are given on superdari, the defendants are allowed to sell the same after deletion or obliteration of the mark RASNA from them, they are also entitled to export the same. The defendants are also entitled to use the mark PAN RAS or any other expression except the word RASNA on their products.
45. For the aforesaid reasons, the application of the defendants under Order 39 Rule 4 CPC is dismissed as there is no merit. On the otherhand the plaintiffs? application under Order 39 R 1 and 2 CPC being IA No. 15532/2011 is allowed. The defendants during the pendency of the suit are restrained to use the mark RASNA in relation to Tobacco products including Pan Masala. Both applications are accordingly disposed of.
CS (OS) No. 2397/2011
46. As per record, no written statement has been filed by the defendants. In the interest of justice, equity and fair play, the defendants are granted last opportunity to file the written statement within three weeks with an advance copy to the plaintiffs who may file the replication within four weeks thereafter. The parties are also granted four weeks time to file the original documents. List the matter before Joint Registrar for admission/denial of documents on 23.02.2012. Thereafter, the matter would be listed before court for framing of issues and directions for trial on 16.03.2012.
