The Hon’ble High Court of Delhi order states that the defendant no.1 and/or the defendant no. 4 (who has registered mark in Saudi Arabia) are by way of an ad-interim injunction, restrained from affixing the mark ‘TAJ MAHAL’ or any other mark deceptively similar to the registered marks of the plaintiff(which is the mark registered in India) . However this order does not affect the right, if any, of the defendant no. 4 to use its impugned mark in Saudi Arabia, as the same is not a subject-matter of this judgment.
Most relevant sections are section 29(2) (c), section 29(3), section 29(6) and section 56 of the Trademark Act.
Facts of the Case:
The Delhi High Court Observed in the case of New Bharat Overseas versus Kian Agro Processing Private Limited & Ors[1] that there are two registered trademarks. While the plaintiff has obtained registration of the trademark and trade device TAJ MAHAL, albeit in India, the defendant no. 4 has also obtained registration of the trademark and trade device TAJ MAHAL under the laws prevalent in that country.
Contentions by both the parties:
The plaintiff submits that consignment of rice were exported by the plaintiff to the defendant no.4 as its distributor in Saudi Arabia, and, thereafter, the defendant no.4 continued to buy rice from the plaintiff till the year 2017. The defendant no.4 then clandestinely obtained the registration of the impugned mark ‘TAJ MAHAL’ in Saudi Arabia, while continuing to import rice from the plaintiff.
The defendant no. 1 compares both the marks and submits that the mark of the defendant no.4 is in Arabic, which as per the ‘Census of India 2011’ is the mother tongue of merely 0.0045% of the Indian population. Therefore there is no possibility of confusion or deception being caused by the affixation of the impugned mark.
The defendant no. 4 contends that it had in bona fide manner adopted the said mark in Arabic letters with drawing of the Taj Mahal Palace inside a frame, demarcated by red and blue color, for its goods and business in the year 1983, and started importing rice of various kind under the said trade mark into Saudi Arabia. He contends that he had business dealings with the plaintiff for supply of rice under the said trade mark/label sporadically somewhere from the year 2003, and on being dissatisfied with the quality of the rice supplied in the year 2009, it stopped dealing with the plaintiff. Thereafter, at the insistence of the plaintiff, the defendant no.4 imported one shipment of 240MT of rice from the plaintiff under the said trade mark/label ‘TAJ MAHAL’ in the year 2017.
The Hon’ble High Court of Delhi observed while the defendant no. 4 claims right only in Saudi Arabia. It is also not denied that the plaintiff is a registered proprietor of the mark ‘TAJ MAHAL’ in India and is using the same in India.
The court felt that Section 29(2)(c), Section 29(3), Section 29(6) and Section 56 of the Act are to be considered for determining the case.
Section 29. Infringement of registered trademarks.–
(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 and clause (c) states that such 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 amounts infringement.
(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.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he affixes it to goods or the packaging thereof, 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, imports or exports goods under the mark or uses the registered trade mark on business papers or in advertising.
Further section 56 states that the application in India of trade mark to goods to be exported from India or in relation to services for use outside India and any other act done in India in relation to goods to be so exported or services so rendered outside India which, if done in relation to goods to be sold or services provided or otherwise traded in within India would constitute use of a trade mark.
(2) The use of a registered trade mark in relation to goods or services between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods or services between which and the said person or a predecessor in title of that person a different form of connection in the course of trade subsisted or subsists.”
Conclusion
Referring to the above provision the court felt that it is clear, that the mark in which and the goods for which, export is being made by the defendant no.1 to the defendant no.4 is identical to the registered trade mark and goods of the plaintiff. In terms of Section 29(2)(c) read with Section 29(3) of the Act, such use would amount to infringement of the registered trademark of the plaintiff in India and it is not disputed that the plaintiff is a prior adopter of the mark in India. Section 29(6) and Section 56(1) of the Act, would therefore, inure to the benefit of the plaintiff and against the defendant nos. 1 and 4. Hence the Hon’ble Court by way of an ad-interim injunction restrained the defendant no. 1 and 4 from affixing the mark ‘TAJ MAHAL’ or any other mark deceptively similar to the registered marks of the plaintiff. However they were free to use the mark in Saudi Arabia.
[1] CS(COMM) 280/2020 & I.A. 6169/2020
DUCTUS EDGE 