AB MAURI INDIA PRIVATE LIMITED vs VICKY AGGARWAL & ORS.
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 810/2022
AB MAURI INDIA PRIVATE LIMITED ….. Plaintiff
Through: Mr. Chander Lall, Sr. Advocate
with Mr. Philip Abraham, Mr. Sanuj Das, Mr. Manish Kumar and Ms. Ananya Chug, Advs.
versus
VICKY AGGARWAL & ORS. ….. Defendant
Through: Mr. Amit Sibal, Sr. Advocate with Mr. Prashant Mehta, Adv. for D-1
Mr. Amit Sibal, Sr. Advocate with Mr. Raghav Marwaha, Adv. for D-2
Mr. Vidit Gupta, Adv and Mr. Chetan Singh, Adv for D-3 & D-9
CORAM:
HON’BLE MR. JUSTICE C. HARI SHANKAR
J U D G ME N T
% 04.03.2024
I.A. 19498/2022 (under Order XXXIX Rules 1 and 2 of the CPC)
1. The only issue in controversy in the present application, filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure 1908 (CPC) in CS (COMM) 810/2022 is whether the defendants can use the mark TOWER for dry fruits, specifically, cashew nuts, almond, walnut, and pistachios, which fall under Class 29 or 30 of the NICE classification of goods for the purposes of registration of trade marks.
Facts
2. The plaintiff is the proprietor of the following registered trademarks:
Trade Mark
Application Number/ Date
Class
Goods
Status
TOWER
BRAND
222079
01/05/1964
30
Edible Yeast and Yeast included in Class 30.
Registered
606483
10/09/1993
30
Cakes, cakes gel, pastry,
confectionery,
yeast, baking
powder, bread,
bread improver
yeast.
Removed
725133
04/10/1996
30
Cake mix, cake powder, cake paste
included in class 30.
Removed
725134
04/10/1996
01
Ingredients in the preparation of cake and bakery
preparations viz glycerol mono stearate powder.
Removed
725135
04/10/1996
30
Ingredients in the preparation of cake and similar bakery
preparations viz bakery powder
Registered
725136
04/10/1996
30
Ingredients in the preparation of cake and similar bakery preparations viz calcium propionate.
Registered
725137
04/10/1996
30
Yeast and similar ingredients in the preparation of cake and similar bakery
preparations.
Removed
725138
04/10/1996
30
Gels-emulsifiers
humectants,
stabilizers and
similar ingredients
in the preparation
of cake and other
bakery preparation.
Registered
725139
04/10/1996
30
flavouring agents
in the preparation
of cake and similar
bakery preparation
falling under.
Removed
7251341
04/10/1996
30
Flavouring agents
in the preparation
of cake and similar
bakery preparation
falling under class 30
Registered
725142
04/10/1996
30
Food flavouring agents in the
preparation of cake
and similar bakery
preparation falling
under class 30.
Registered
725143
04/10/1996
30
Flavouring agents in the
preparation of cake
and similar bakery
preparation falling
under class 30.
Registered
725144
04/10/1996
30
Flavouring agents in the
preparation of cake and similar bakery
preparation falling
under class 30.
Registered
725145
04/10/1996
30
Cake mix, cake
powder, cake paste,
and similar bakery
preparations.
Registered
TOWER
2213663
30/09/2011
1
Chemical
preparations and
substances for use
in the food and
beverage industry;
food and beverage
additives,
preservatives and
ingredients used in
the manufacture of
beverages or
foodstuffs,
including bakery goods; calcium
propionate;
ascorbic acid
(synthetic vitamin
C); bread improver
(enzymes,
emulsifiers, gums,
yeast starters);
dough improvers,
dough leaveners,
mold inhibitors,
sweeteners,
glucose, starch,
enzymes, organic
and inorganic
acids, flavour
improvers,
nutrients for use
with yeast, raw
salt.
Registered
TOWER
2213664
30/09/2011
29
Milk products;
butter; butter blend:
cream/pastry
margarine; bakers
cream; instant
custard powder;
edible fats; edible
oils; oil substitute;
shortening; fat containing
mixtures for bread
slices; fatty
substances for the
manufacture of
edible fats.
Registered
TOWER
2213665
30/09/2011
30
flour and
preparations made
from cereals;
bakery products;
bakery mixes;
snack foods; yeast
including dry yeast,
wet yeast and block
yeast; yeast
extracts; yeast
products for food;
yeast tablets and
yeast in pill form;
bread improvers;
bread; pastry;
brioche; pancakes;
biscuits; soy bread;
cakes; cake mixes;
muffin mixes; pies; sugar
confectionary, flour confectionery;
custard; fruit slices;
fruit jellies; pastry
dough; bread
dough; stuffing
mix; salt for
cooking; pasta
containing eggs;
baking powder;
edible decorations
for cakes; aromatic
preparations for
food; preparation
for stiffened
whipped cream.
Opposed
2374913
06/08/2012
1
Chemical
preparations and
substances for use
in the food and
beverage industry;
food and beverage
additives,
preservatives and
ingredients used in
the manufacture of
beverages or
foodstuffs,
including bakery
goods; calcium
propionate;
ascorbic acid
(synthetic vitamin
c); bread improver
(enzymes,
emulsifiers, gums,
yeast starters);
dough improvers,
dough leaveners,
mold inhibitors,
sweeteners,
glucose, starch, enzymes,
organic and
inorganic acids, flavour
improvers,
nutrients for use
with yeast, raw
salt; releasing
agents; release
agents for use in baking;
emulsifiers;
chemical
seasonings for food manufacture.
Registered
2374915
06/08/2012
29
Milk products;
butter; butter blend;
cream/pastry
margarine; bakers
cream; instant
custard powder;
edible fats; edible oils; oil substitute;
shortening; fat
containing
mixtures for bread
slices; fatty
substances for the
manufacture of
edible fats;
gelatine;
flavourings (other
than essential oils)
for meat, milk and
milk products;
preparations used
as additives for
meat, milk and
milk products;
additives (nonmedicated)
for
foodstuffs;
preparations for use
as dietetic additives
for food for human
consumption;
protein
preparations for use
as additives to
foodstuffs for
human
consumption (other
than adapted for medical purposes).
Opposed
2374916
06/08/2012
30
flour and
preparations made from cereals;
bakery products;
bakery mixes; egg
free cake, bread
and bakery mixes;
egg free mixes;
snack foods; yeast
including dry yeast,
wet yeast and block
yeast; yeast
extracts; yeast
products for food;
yeast tablets and
yeast in pill form;
bread improvers;
cake improvers;
cake gels and
conditioners;
bread; pastry;
brioche; pancakes;
biscuits; brownies;
donuts; cookies;
pizza bases; soy
bread; cakes;
sponge; sponge
cakes; cake mixes;
sweet good mixes;
dessert products;
muffins; muffin
mixes; pies; sugar
confectionary;
flour
confectionery;
custard; fruit slices;
fruit jellies; pastry
dough; bread
dough; stuffing
mix; salt for
cooking; pasta
containing eggs;
baking powder;
edible decorations
for cakes; aromatic
preparations for
food; preparation
for stiffened
whipped cream;
non-dairy whip
topping; non-dairy
whipped dessert
toppings and
whipped cream
substitutes; icing;
gels; glazes (food);
flavourings (other
than essential oils)
for foodstuffs, food
and beverages;
preparations used
as additives for
foodstuffs, food
and beverages;
additives (nonmedicated)
for
foodstuffs;
preparations for use
as dietetic additives
for food for human
consumption;
seasonings; blends
of seasonings;
chemical
seasonings
(cooking) and dry
seasonings; spice
extracts, spice
mixes, spice
preparations, spices
and spices in the
form of powders.
Opposed
2374919
06/08/2012
29
Milk Products;
Butter; Butter
Blend; Cream/Pastry
Margarine; Bakers
Cream; Instant
Custard Powder;
Edible Fats; Edible
Oils; Oil
Substitute;
Shortening; Fat-
Containing
Mixtures For Bread
Slices; Fatty
Substances For The
Manufacture Of Edible Fats;
Gelatine;
Flavourings (Other
Than Essential
Oils) For Meat,
Milk And Milk
Products;
Preparations Used
As Additives For
Meat, Milk And
Milk Products;
Additives (Non- Medicated) For
Foodstuffs;
Preparations For Use As Dietetic Additives For Food For Human
Consumption;
Protein Preparations For Use As Additives
To Foodstuffs For Human
Consumption
(Other Than
Adapted For Medical Purposes)
Abandoned
2374920
06/08/2012
30
Flour and
preparations made from cereals; bakery products; bakery mixes; egg free cake, bread and bakery mixes;
egg free mixes;
snack foods; yeast including dry yeast,
wet yeast and block yeast; yeast extracts; yeast products for food;
yeast tablets and
yeast in pill form; bread improvers;
cake improvers;
cake gels and
conditioners;
bread; pastry;
brioche; pancakes; biscuits; brownies;
donuts; cookies;
pizza bases; soy
bread; cakes;
sponge; sponge cakes; cake mixes;
sweet good mixes;
dessert products; muffins; muffin mixes; pies; sugar
confectionary;
flour
confectionery;
custard; fruit slices;
fruit jellies; pastry dough; bread dough; stuffing mix; salt for cooking; pasta
containing eggs; baking powder; edible decorations
for cakes; aromatic
preparations for food; preparation
for stiffened
whipped cream;
non-dairy whip
topping; non-dairy whipped dessert
toppings and
whipped cream
substitutes; icing; gels; glazes (food);
flavourings (other than essential oils) for foodstuffs, food
and beverages;
preparations used as additives for
foodstuffs, food
and beverages;
additives (nonmedicated) for foodstuffs;
preparations for use as dietetic additives for food for human
consumption;
seasonings; blends of seasonings;
chemical seasonings
(cooking) and dry seasonings; spice extracts, spice mixes, spice preparations, spices and spices in the form of powders.
Abandoned
TOWER
3635786
14/09/2017
2
Colorants for
foodstuffs, food and beverages; additives for use as colorants for
foodstuffs, food and beverages.
Registered
3. In or around January 2013, the plaintiff came to learn of the use, by Defendant 4, (of which Defendants 1 to 3 are partners) of the mark TOWER for monosodium glutamate (MSG), citric acid, tartaric acid, green raisins, camphor, copper sulphate, Hexamine, damar batu and mercury.
4. The plaintiff, thereupon, addressed a legal notice to Defendant 4 on 30 January 2013, calling on the defendants to restrict the use, by it, of the mark TOWER to goods falling in class 1 and not expand its use to goods falling in class 30 or any other related class.
5. Defendant 4 responded thus, to the plaintiff, on 20 March 2013, and it is this response which forms the crux of the controversy:
To, Date: 20/03/2013
AB Mauri India (P) Ltd.
Plot No. 218 & 219,
BommasandraJigni Link Road,
Bangalore-560 106
Dear Sirs
We are in receipt of your letter dated January 30, 2013. In consideration of the same, we hereby solemnly undertake as follows:
a) We recognize and acknowledge the proprietary rights of A.B. Mauri India (P) Ltd. in the trademark TOWER in respect of goods forming part of class 30 of the Classification of goods and services-under the Trade Marks Act, 1999.
b) We submit that we are using the mark TOWER only in respect of our goods namely Monosodium Glutamate, Citric Acid, Tartaric Acid, Green Raisins, Camphor, Hexamine tablets, which form part of class 1 & 29 of the Classification of goods and services-under the Trade Marks Act, 1999.
c) We submit that we shall restrict the use of TOWER mark only in respect of our aforementioned goods falling in class 1 & 29.
d) We undertake that we shall not make, sell or offer for sale any products, or conduct business or conduct business in the future under the mark TOWER or any other mark similar mark in relation to goods and classes of interest of A.B. Mauri India (P) Ltd. including and not limited to Class 1 & 29 goods.
e) We confirm and undertake we have neither filed, nor shall file any application for the mark TOWER or anything confusingly similar to TOWER for any goods and classes of interest of A.B. Mauri India (P) Ltd. including and not limited to Class 1 & 29 goods.
f) We undertake that we shall not, nor shall our heirs, assigns, employees and anybody who has interest in our venture, oppose any future application for registration or use of TOWER by A.B. Mauri India (P) Ltd., Inc., its assigns, employees, licensees etc in India or anywhere else in the world;
This undertaking is signed on this the day herein before mentioned.
Sd/
M/s Hainey Global
6. Thus,
(i) Defendant 4 recognized the proprietary right of the plaintiff in the trade mark TOWER in respect of goods falling in Class 30. Defendant 4 thereby, stood proscribed from using the mark TOWER in respect of any goods falling in Class 30.
(ii) Defendant 4 undertook not to use the mark TOWER in respect of any goods other than MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets, in Classes 1 and 29.
(iii) Defendant 4 further undertook not to use the mark TOWER in respect of any goods or classes of interests to the plaintiff. This undertaking was specifically not limited to goods falling in classes 1 and 29.
7. The self-imposed proscription on Defendant 4, therefore, extended to:
(i) all goods and classes of interest to the plaintiff, irrespective of the class in which they fell,
(ii) all goods in Classes 1 and 29 except MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets and
(iii) all goods in class 30.
8. The plaintiff had, prior to the above communication, filed an opposition against Application No. 1655205 of Defendant 4 before the Trade Marks registry, seeking registration of the trade Marks in class 1 for MSG, citric acid chemicals.
9. A counter statement to the opposition was filed by Defendant 4 on 14 September 2012.
10. Consequent on the above communication dated 20 March 2013 from Defendant 4 to the plaintiff, the plaintiff withdrew the opposition against Application No. 1655205 of Defendant 4, which was filed through Defendant 1.
11. In the meanwhile, Vinod Kumar Aggarwal-Defendant 3, obtained Trade Mark registration No. 1411775 for the word mark TOWER in Class 1 for MSG and citric acid chemicals w.e.f. 6 January 2006. Defendant 3 thereafter assigned registration no. 1411775 in favour of Defendant 1 trading as Defendant 4 vide assignment deed dated 20 December 2016.
12. The plaint alleges that, in violation of the undertaking contained in the communication dated 20 March 2013, Defendants 1 to 4 had applied, both prior to the communication and thereafter, for registration of the mark TOWER for various categories of goods in Classes 1, 29 and 30. A tabular statement in this regard is provided in para 16 of the plaint, thus:
S. No.
Application No. /Registration No.
Applicant
Trade Mark
Status
Class/
Goods
1.
1411775
06/01/2006
Published on 01/08/2008
Vicky Aggarwal
Trading As:
M/s Hainey Global
TOWER
Registered
01;
Mono sodium glutamate and citric acid, chemicals.
2.
1655205
19/02/2008
Published on 01/06/2010
Vicky Aggarwal
Trading As:
Hainey Global
Opposed by Plaintiff on 29/09/2010
Withdrawn on 27/01/2015
01;
Mono sodium glutamate and citric acid, chemicals
3.
1919463
09/02/2010
Published on 23/03/2015
Vicky Aggarwal
Trading As:
Hainey Global
Registered
01;
Mono sodium glutamate,
citric acid chemicals
4.
3063535
28/09/2015
Published on 27/05/2019
Atule Agarwaal
Opposed by Plaintiff on 18/09/2019
30;
Spices, seasoning, condiments, besan, rice, wheat flour
5.
3107173
26/11/2015
Published on
23/09/2019
Atule Agarwaal
Opposed
29;
Dry fruits,
dairy
products,
snack foods,
processed or
roasted nuts
and fresh
nuts,
preserved or
salted foods,
dried and
cook fruits
and
vegetables, jellies, jams, snack foods,
preserved
fruit sauces,
milk and milk products,
popcorns,
edible oils,
ghee, pickles
and fats in
class-29
6.
3194213
25/02/2016
Atule
Agarwaal
Objected
29;
Dry fruits,
dairy
products,
snack foods,
processed or
roasted nuts
and fresh
nuts,
preserved or
salted foods,
dried and
cook fruits
and vegetables,
jellies, jams,
snack foods,
preserved
fruit sauces,
milk and milk
products,
popcorns,
edible oils,
ghee, pickles
and fats in
class-29
7.
3618273
22/08/2017
Atule
Agarwaal
TOWER
EVERYDAY
Objected
01;
Mono sodium
glutamate,
citric acid
chemicals
8.
3618274
22/08/2017
Published on 10/02/2020
Atule
Agarwaal
TOWER
EVERYDAY
Opposed by Plaintiff on 05/05/2022
29;
Dry fruits,
snack foods,
processed or
roasted nuts & fresh nuts.
Preserved or
salted foods,
dried & cook fruits and jams snack foods.
Preserved,
fruit sauces,
popcorn
pickles.
9.
3618275
22/08/2017
Published on 23/05/2022
Atule
Agarwaal
TOWER 123
Opposed by Plaintiff on 15/09/2022
01;
Mono sodium
glutamate,
citric acid
chemicals
10.
3618276
22/08/2017
Atule
Agarwaal
TOWER 123
Objected
29;
Dry fruits,
dairy
products,
snack foods,
processed or roasted nuts
and fresh
nuts. Preserved
or salted
foods, dried &
cook fruits &
jams, snack
foods.
Preserved,
fruit sauces
milk & milk
products,
popcorns,
edible oils,
ghee, pickles
& fats.
11.
3618278
22/08/2017
Published on 23/05/2022
Atule
Agarwaal
TOWER ENJOY
Opposed by Plaintiff on 15/09/2022
01;
Mono sodium
glutamate,
citric acid
chemicals
12.
3618279
22/08/2017
Published on 13/07/2020
Atule Agarwaal
TOWER ENJOY
Opposed by Plaintiff on 03/11/2020
29;
Dry fruits,
dairy
products,
snack foods,
processed or roasted nuts
& fresh
nuts. Preserved
or salted
foods, dried &
cook fruits &
jams, snack
foods.
Preserved,
fruit sauces
milk & milk
products,
popcorns,
edible oils,
ghee, pickles
& fats.
13.
3772601
08/03/2018
Published on 17/01/2022
Atule Agarwaal
POWER
Opposed by Plaintiff on 03/05/2022
29;
Dry fruits,
dairy
products,
snack foods,
processed or roasted nuts
and fresh
nuts, Preserved
or salted
foods, dried &
cook fruits & vegetables, jellies,
jams, snack
foods,
preserved,
fruit sauces,
milk & milk
products,
popcorns,
edible oils,
ghee, pickles
& fats.
14.
3772602
08/03/2018
Published on 09/07/2018
Atule Agarwaal
POWER
Registered
30;
Churan, churan goli, saunf, toffees, candy,
confectionary
15.
3772603
08/03/2018
Atule Agarwaal
POWER
Objected
01;
Mono sodium
glutamate,
citric acid
chemicals
16.
4056891
15/01/2019
Atule Agarwaal
Objected
29;
Dry fruits,
snack foods,
processed or
roasted nuts & fresh nuts,
preserved or
salted foods,
dried & cook fruits and vegetables, jellies, jams, snack foods,
preserved,
fruit sauces,
popcorns and
pickles
17.
4122372
19/03/2019
Vicky Aggarwal
Trading As
M/s Hainey Global
TOWER SPAIN
Registered
01;
Mono sodium
glutamate,
citric acid
18.
4347432
14/11/2019
Vivan Inc.
Partnership
Firm Details:
Atule
Agarwaal & Vicky
Aggarwal
TOWER SAFFRON
Objected
30;
Spices & Saffron
19.
4914117
20/03/2021
Published on
19/04/2021
Atule Agarwaal & Vicky Aggawal
TOWER TANATAN
Opposed by Plaintiff on 19/08/2021
29;
Dry fruits
20.
5042197
13/07/2021
Atule
Agarwaal & Vicky
Aggarwal
Partners Of Tower Nuts
Objected
29;
Fresh Nuts &
Dry fruits,
Seeds
21.
5042198
13/07/2021
Published on
04/10/2021
Atule
Agarwaal & Vicky
Aggarwal
Partners Of Tower Nuts
TOWER NUTS
Opposed by
Plaintiff on
31/01/2022
29;
Dry fruits
22.
5201476
08/11/2021
Published on
20/12/2021
M/S Tower
Nuts
Partnership
Firm Details:
Atule
Agarwaal &
Vicky
Aggarwal
Opposed by
Plaintiff on
14/04/2022
29;
Nut & dry
fruits
13. It also merits mention that, at the time when the undertaking in the form of communication dated 20 March 2013 was addressed by Defendant 4 to the plaintiff, Defendants 1 to 3 were all partners in Defendant 4. Applying the principle that a partnership is only a compendious name for the partners, Defendants 1 to 4 were prima facie bound by the undertaking contained in the communication dated 20 March 2013.
14. It is in these circumstances that the plaintiff has instituted the present suit before this Court seeking a restraint against the defendants
from using the mark TOWER for any goods other than classes 1, 29 and 30 which are MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets.
15. The dispute has essentially narrowed down to whether the defendants can use the said mark TOWER for dry fruits, specifically cashew nuts, pistachios, almond and walnuts, which fall within Class 29 of the NICE classification.
Rival contentions
16. I have heard Mr. Chander M. Lall, learned Senior Counsel for the plaintiff and Mr. Amit Sibal, learned Senior Counsel for the defendants at exhaustive length.
17. Mr. Lall contends that the defendants are completely foreclosed from using the mark TOWER or seeking registration of the mark TOWER in any form, in respect of any goods except MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets falling within Classes 1 and 29. He submits that clause (c), in the communication dated 20 March 2013, completely forecloses the right of the defendants to either use the mark TOWER or seek its registration in respect of any other goods or in any other class. The right of the defendants to use the mark TOWER, or seek its registration is, therefore, according to Mr. Lall, confined to six items MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets.
18. Without prejudice to this contention, Mr. Lall submits that even if clause (d) were to be read as expanding the right of the defendants to seek registration of the mark TOWER to goods other than MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets, the defendants were nonetheless proscribed from using or seeking registration of the mark TOWER in respect of goods or classes of interest of the plaintiff. All goods which fall within the classes in which the plaintiff has registration of the mark TOWER, according to Mr. Lall, would be goods of interest to the plaintiff. Accordingly, dry fruits, such as cashew nuts, almonds, pistachios, walnuts, are also goods of interest for the plaintiff as they fall within Class 29 of the NICE classification.
19. Mr. Lall further alleges that, in violation of clause (f) of the communication dated 20 March 2013, the defendants opposed the Application No. 2213665 dated 30 September 2011 filed by the plaintiff for registration of the mark TOWER in Class 30.
20. Mr. Lall further submitted that, though the prayer in the plaint is widely worded, the only grievance of the plaintiff was with respect to use, by the defendants, of the mark TOWER, for dry fruits other than green raisins. He submits that the defendants contention, on the other hand, is that a combined reading of clauses (b) and (c) of the undertaking contained in the communication dated 20 March 2013 entitled the defendants to use the mark TOWER for dry fruits other than dry raisins provided they were not goods or classes of interest to the plaintiff. He has drawn my attention, in this context, to paras 1 to 3, 12 and 23 of the written statement filed by way of response to the plaint, which read thus:
PRELIMINARY OBJECTIONS:
PLAINTIFF AND DEFENDANTS ARE INTO SEPARATE AND DISTINGUISHABLE GOODS AND PLAINTIFF CANNOT SEEK TO CLAIM MONOPOLY OVER ALL THE PRODUCTS IN A SINGLE CLASS
1. It is submitted upon a reading of the Plaint and the Documents filed also therewith as also of the records of the Trademark Office, it is apparent that the Plaintiff is involved in the manufacture and sale of goods limited to yeast, ingredients/flavouring agents, additives which are used in the manufacturing of bakery goods products and beverages. Such usage is confined to only some of the products specified in Class 1, 2, 29 and 30. For the purpose of easy reference, such products may be mentioned as under:
a. yeast, ingredients/flavouring agents in preparation of cakes, milk products, baking powder, cake mix, cake paste, flour and preparations made from cereals, etc for Class 30,
b. chemical preparations and substances for use in the food and beverage industry, additives, etc. in Class 1,
c. milk products, butter, butter blond, cream/pastry margarine, etc. in Class 29 and
d. colorants for foodstuffs, food and beverages, additives, etc for Class 2.
Almost all of the above-listed items in which Plaintiff has registered Trade Marks are used predominantly for the purpose of baking.
On the other hand, the Answering Defendants are involved in the import/sale and manufacturing:
a Monosodium Glutamate, Citric Acids, Tartaric Acid in Class 1,
b. camphor tablets, camphor (not for medicinal use), iso- borneol tablet, thymol & menthol, burning slab etc. in Class 3,
c. Green raisins, dry fruits, processed or roasted nuts, fresh
nuts, popcorns and pickles in Class 29, and
d. Spices, seasoning, condiments and saffron in Class 30.
2. From the above, it is evident that the Plaintiff and the Answering Defendants are involved in products which are completely different and distinct from each other. There is absolutely no similarity in the goods in which either of the party is involved. Even the customer base and trade channels of the Plaintiff and the Answering Defendants is completely different and there is no commonality between the two.
3. It is submitted that the Plaintiff is involved in additives in bakery products. The list of products, in Classes 1, 2, 29 and 30 are not direct food products but additives used in food products. In fact, as per the own admission of the Plaintiff, it is involved in the products sold in Business-to-Business (B2B) products. It does not sell to the end customers directly. On the other hand, the Defendants are involved in dry fruits, Mono Sodium Glutamate, Citric Acids, Tartaric Acids, various forms of camphor, saffron, etc. The goods produced by the Defendants are, in one way or the other, directly consumed by the end consumer, that is, dry fruits, monosodium glutamate, tartaric acid, citric acid (chemicals added in food), various forms of camphor and saffron. Thus, Defendants are involved in the Business-to-Customer (B2C) model. Even otherwise, the word marks/trademarks of the Answering Defendants have been in use openly, continuously and extensively since 2002 and have thus spent 2 decades in the market. It is also submitted that there is absolutely no similarity in the products for which the marks are used by the Plaintiff and the Defendants.
*****
NO VIOLATION OF THE UNDERTAKING DATED 20.03.2013
12. It is submitted that there has been no violation of the Undertaking dated 20.03.2013. In its notice dated 30.01.2013, the Plaintiff was only concerned that the Defendant not expand use of the trademark Tower in respect of goods falling in class 30 or any class related thereto.
*****
23. It is further submitted that the Answering Defendants have been selling and importing dry fruits in the name of TOWER since 2010-2011. The Answering Defendants have filed a separate List of Documents wherein the Invoices raised by them since 2010-2011 have been filed in support of the same.
21. The case that the defendants seek to build is, therefore, that clause (d) entitled them to use registration of the mark TOWER in respect of dry fruits other than dry raisins so long as they were not goods or classes of interest to the plaintiff. According to the defendants, the products in respect to which the plaintiff held registration were all bakery products, used in baking. As against this, dry fruits, contended the defendants, are not bakery products, even if they may, on occasion, be used in bakery products. They, therefore, are not goods of interest to the plaintiff.
22. Mr. Lall also points out that, though the communication dated 20 March 2013 was signed by Defendant 4, none of the defendants could challenge its applicability to them. Though Defendant 2, Atule Agarwaal, in his written statement, sought to contend that he was not a signatory to the communication dated 20 March 2013, it could not bind him, it was not open to him to so contend, as in view of paras 1, 4 and 5 of the opposition dated 27 April 2018, of Defendant 2, to Application no. 2213665 filed by the plaintiff for registration of the word mark TOWER in class 30. The said paragraphs read thus:
1. That the Opponents are engaged in the business of manufacturing and marketing of various goods including goods in class 30 (hereinafter referred to as the said goods) and have been carrying on their business under the name and style of M/s Hainey Global, 15, Deepali Enclave, Pitam Pura, Delhi 110 034.
*****
4. That the Opponent is the registered proprietor of the trade mark TOWER under registration no. 1411775 dated 06/01/2006 in class 01 and the said registration is still valid and subsisting.
5. That the Opponent thereafter has filed various applications for registration of its various TOWER formative trademarks and the details of which are as under: –
S. no.
Trademark
Application No.
Class
Date of application
Name of the Applicant
1
1655205
1
19/02/2008
HAINEY
GLOBAL
2
T O W E R
1411775
1
06/01/2006
MR.VICKY
AGGARWAL
Trading As :
HAINEY
GLOBAL
3
TOWER
EVERYDAY
3618273
1
22/08/2017
ATULE
AGARWAAL
4
TOWER 123
3618275
1
22/08/2017
ATULE
AGARWAAL
5
TOWER
ENJOY
3618278
1
22/08/2017
ATULE
AGARWAAL
10
TOWER 123
3618276
29
22/08/2017
ATULE
AGARWAAL
11
TOWER
EVERYDAY
3618274
29
22/08/2017
ATULE
AGARWAAL
12
TOWER
ENJOY
3618279
29
22/08/2017
ATULE
AGARWAAL
13
3107173
29
26/11/2015
ATULE
AGARWAAL
23. There is obvious merit in Mr. Lalls submission. In the face of the aforesaid assertion contained in the opposition filed by him to Application No. 2213665 of the plaintiff for registration of the mark TOWER, Defendant 2 Atule Agarwaal cannot seek to contend that he was not bound by the undertaking/communication dated 20 March 2013.
24. Mr. Lall also took me through the notice of opposition dated 29 September 2010, whereby the plaintiff opposed application no. 1655205 dated 19 February 2008 of Defendant 1 trading as Defendant 4 for registration of the mark in class 1 for MSG and citric acid chemicals.
25. Defendant 1 filed its counter statement to the notice of opposition, following which the plaintiff addressed a cease and desist notice to the defendant on 30 January 2013. It was this communication which led to the communication/undertaking dated 20 March 2013, following which the plaintiff withdrew the opposition filed by it to Application 1655205 of Defendant 1/Defendant 4.
26. Mr. Lall submits that, in the teeth of the undertaking, Defendant 2 applied, on 28 September 2015, vide application no. 3063535 for registration of the mark in Class 30 for spices, seasoning, condiments, besan, rice, wheat flour. The invoices filed in support of the application, he points out, were significantly invoices raised by Defendant 4.
27. Thereafter, on 26 November 2015, Defendant 2 Atule Aggarwal filed yet another Application No. 3107173 for registration of the device mark in class 29 for dry fruits, dairy products, snack foods, processed or roasted nuts and fresh nuts, preserved or salted foods, dried and cook fruits and vegetables, jellies, jams, snack foods, preserved, fruit sauces, milk and milk products, popcorns, edible oils, ghee, pickles and fats. User was claimed, by Defendant 2, of 1 April 2015.
28. Thereafter, on 17 April 2018, Defendant 2 amended his claim of user from 1 April 2015 to 1 April 2009, obviously so as to pre-date the undertaking dated 20 March 2013. However, all invoices filed with the application, points out Mr. Lall, are of 2016-17.
29. Mr. Lall further points out that, in para 8 of the opposition filed by him to Application no. 2213665 of the plaintiff for registration of the mark TOWER in class 30, Defendant 2 has averred thus:
8. That the trade mark of the applicant TOWER is in all essential respects identical with or deceptively similar to the opponents trade mark. The goods are also of the same description and if the applicants are allowed to use or register their mark, there may be deception of the public and injury to the opponents trade and business.
30. There is, therefore, clear admission, by Defendant 2, of the fact that the marks used by plaintiff and defendants were deceptively similar to each other and that their being simultaneously used in the market would create confusion and injure each others business.
Submissions of Mr. Amit Sibal, learned Senior Counsel for the defendants.
31. Responding to the submissions of Mr. Lall, Mr. Amit Sibal, learned Senior Counsel appearing for the defendants, submits that, unlike the products of the plaintiff, in respect of which they hold registration and which are sold on Business to Business (B2B) basis, the dry fruits manufactured and sold by the defendants are on Business to Consumer (B2C) basis and are meant for direct consumption, and not for use in marketing of bakery products.
32. He submits that the plaintiff has not sought to contend, anywhere, that it was either doing, or intending to do, any business in dry fruits, using any trade mark. In that view of the matter, he submits that the use of the mark TOWER, by his clients, for dry fruits, cannot be said to be likely to result in any irreparable loss to the plaintiff, as would justify grant of injunction. Thus, submits Mr. Sibal, this is essentially a dog in the manger suit.
33. Mr. Sibal further submits that the case argued by Mr. Lall has nothing to do with the prayers in the plaint. He submits that there is no prayer, in the plaint, for a restraint against the defendants from acting in violation of the undertaking/communication dated 20 March 2013. As such, in the absence of any such prayer, the plaintiff cannot, in oral arguments, seek to enforce the undertaking. The plaintiff has, therefore, to make out a case of infringement or passing off de hors the terms of the undertaking.
34. I may note, at this juncture itself, that this submission of Mr. Sibal cannot brook acceptance. A plaint, it is well-settled, has to be read as a whole. There is clear reference to, and reliance upon, the undertaking dated 20 March 2013, in the averments contained in the plaint filed by the plaintiff. The prayers in the plaint have to be seen in conjunction with the averments contained in the plaint. As such, it cannot be said that, in seeking to argue for enforcement of the undertaking dated 20 March 2013, Mr. Lall has travelled beyond the prayers in the plaint.
35. Mr. Sibal further submits that the plaintiff has no registration in Class 29 for dry fruits. Nor is there any application for registration of the mark TOWER, for dry fruits, filed by the plaintiff and pending with the trade mark authorities. It cannot, therefore, be sought to be urged, by the plaintiff, that the defendant is infringing the plaintiffs registered trade mark. Dry fruits, he points out, form an entire separate category in Class 29 of the NICE classification. It is not the plaintiff has sought to contend, anywhere, that dry fruits are allied or cognate to the goods in respect of which the plaintiff holds registration for the mark TOWER. He submits that dry fruits are used for a variety of products and preparations, both packed and unpacked, and are also consumed on their own. There is no document placed on record by the plaintiff to support any averment of similarity between the goods in respect of which the plaintiff holds trade mark registrations and which sold by it, and dry fruits. In this context, he submits that the plaintiff has merely placed on record 37 invoices and no other material.
36. Mr. Sibal has drawn my attention to the packets of dry fruits sold by his client, photographs of which have been placed on record by the plaintiffs with its plaint which clearly indicates that the dry fruits are sold as such individually packs and not as additives in bakery products or for use in bakery products. He compares logos of the plaintiff and the defendants to contend that they are entirely different and distinct and that there is no chance of confusion in the market. Besides, submits Mr. Sibal, the plaintiffs goods are sold to professional bakers, whereas the defendants goods are sold in the open market for immediate consumption by consumers, though they can also be used in bakery and confectionary items. There is, therefore, neither any likelihood of market confusion nor any attempt by the defendants to ride on the plaintiffs goodwill. Inasmuch as the plaintiffs goods are sold to B2B basis, and the defendants goods are sold on B2C basis, their channels of trade are also different, thereby obviating any chance of market confusion whatsoever.
37. In this context, Mr. Sibal has placed reliance on the response of the plaintiff to Opposition No. 1122751 filed by M/s. Liberty Oil Mills Ltd to Application No. 2374915 of the plaintiff for the registration of the trademark in Class 29. In its response to the said opposition, the plaintiff has contended that there was no chance of confusion between the plaintiffs mark and the mark of Liberty Oil Mills Ltd, as the plaintiffs products were mostly sold in the B2B market. This equally applies, he submits, to the likelihood of confusion arising out of the use, by the defendants, of the TOWER mark for dry fruits.
38. The issue of whether goods are allied or cognate, he submits, is required to be decided on the basis of the nature of goods, the trade channels and the manner in which they are used. Keeping this factor in mind, he submits that the impugned use of the mark TOWER, by the defendants, cannot result in any market confusion whatsoever.
39. If the plaintiff has no objection to the use of the mark TOWER, by the defendants, for MSG, citric acid, tartaric acid, or even for green raisins and other such items, which are taste enhancers and the use of the mark TOWER for such items, by the defendants, is not likely to result in any market confusion, Mr. Sibal questions as to how the plaintiff can seek to contend that the use of the mark TOWER, by the defendants, for dry fruits, is likely to do so.
40. In the absence of any likelihood of confusion, he submits that no prima facie case for infringement within the meaning of Section 29(2) of the Trade Marks Act can be said to exist.
41. He places reliance, in this context, on the judgment of the Supreme Court in Nandhini Delux v. Karnataka Cooperative Milk Producers Federation Ltd1.
42. Insofar as the averment in para 8 of the notice of opposition dated 27 April 2018 filed by Defendant 2 Atule Agarwaal against Application No. 2213665 of the plaintiff for registration of the mark TOWER in Class 30 is concerned, Mr. Sibal submits that the averment was apropos Class 30 and would not apply to Class 29.
43. Mr. Sibal also places reliance, in this context, on paras 44 and 47 to 49 of the judgment of the Supreme Court in Vishnudas v. The Vazir Sultan Tobacco2, para 26 of Nandhini Delux, para 18 of the judgment of a learned Single Judge of this Court in S. Narendra Kumar v. Everest Beverages and Foods Industries 3, paras 62, 68 and 69 to 73 of my judgment in FDC Limited v. Faraway Foods Pvt Ltd4, and the judgment of the Division Bench of the High Court of Madras in Hatsun Agro Ltd v. M/s. Sri Ganapathy Dairy5.
44. Mr. Sibal has also sought to advance a preliminary objection that the plaintiffs prayer for injunction is not maintainable in view of Section 41(h) read with Section 14 of the Specific Relief Act. The prayer in the suit, he submits, has to be for specific performance in order for such an application to be maintained. A suit for specific performance cannot be disguised as a suit for injunction. He relies, for this purpose, on the judgment of this Court in Mujeeb Rehman v. Mohd. Nabi6, paras 16 to 20, 22, 24 and 26 to 28 of the judgment of this Court in Times Internet Ltd v. Alt Digital media Entertainment Ltd7 and paras 6 to 8 of the judgment of the Supreme Court in Atma Ram v. Charanjit Singh8.
45. Mr. Sibal submits that there has been no breach of the undertaking dated 20 March 2013, by the defendants nor is there any evidence of any detriment having resulted to the plaintiff as a consequence thereof. Insofar as the withdrawal on 27 January 2015, by the plaintiff, of the opposition to the defendants Application No. 1655205 was concerned, Mr. Sibal submits that withdrawal was almost two years after the undertaking and could not, therefore, be linked to it. Whether the withdrawal was the consequence of the undertaking, he submits, is in any case, at best, a matter of trial.
46. Mr. Sibal submits that, if the undertaking dated 20 March 2013 is holistically read, it does not evince any intention of the defendants to restrict their future use of the TOWER mark only in respect of six items, MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets. Any other interpretation of the undertaking, he submits would render the undertaking violative of Section 27 of the Contract Act, 1872, as an agreement in restraint of trade.
47. Besides, submits Mr. Sibal, grant of any injunction, as sought by the plaintiff, would be completely opposed to the principles of equity and good conscience, as the defendants are the only users of the mark TOWER for dry fruits in Class 29. There is no material to indicate that the plaintiff is engaged in the manufacture or sale of dry fruits or has any interest in the said business. The balance of convenience would also, therefore, not justify injuncting the defendants from use of the mark TOWER for dry fruits.
48. Nothing, submits Mr. Sibal, turns on the interrelationship among Defendants 1 to 3 or their relationship with Defendant 4.
Submissions of Mr. Lall in rejoinder
49. Arguing in rejoinder, Mr. Lall submits that the plaintiff is not asking the defendants to perform anything under the undertaking so as to require the plaintiff to file a suit for specific performance. He submits that he is pleading the existence of undertaking dated 20 March 2013 and the covenants thereof, as estoppel against the defendants seeking to justify use of the mark TOWER for dry fruits. He submits that the prayer in the suit is for absolute restraint against the defendants using the mark TOWER for goods covered by Classes 29 and 30, and not for non-infringing goods. He has drawn attention to Section 37(2) of the Specific Relief Act read with Section 115 of the Indian Evidence Act, 1872 and Sections 39, 42 and 49 of the Specific Relief Act. In view of Section 115 of the Evidence Act, Mr. Lall submits that it cannot lie to contend that the use of the mark TOWER, for dry fruits, classifiable in Class 29 of the NICE classification would not be infringing. He submits that it is not for the defendants to carve out the goods which would be of interest to the plaintiff, as envisaged by Clause (d) of the undertaking dated 20 March 2013 and that the discretion in that regard would lie with the plaintiff.
50. He points out that his prayer for injunction is not predicated solely on the undertaking and that he has, in his plaint, clearly pleaded likelihood of confusion and deception if the mark TOWER were to be used by the defendants for dry fruits.
51. Mr. Lall further pleads promissory estoppel against the defendants. He submits that, at the time of giving of the undertaking on 20 March 2013, the defendants only had registration for MSG, citric acid chemicals. The plaintiff had, prior to the said undertaking, filed an opposition against trade mark Application No. 1655205 dated 19 February 2008 of the defendants for registration of the device mark in respect of MSG, citric acid chemicals. It was consequence on the aforesaid undertaking dated 20 March 2013 that the plaintiff withdrew the said opposition.
Analysis
52. To my mind, despite the exhaustive submissions advanced at the bar, the issue in controversy is essentially very simple, especially given the fact that the Court is presently examining an application under Order XXXIX Rules 1 and 2 of the CPC.
53. Whether the Court views the matter from the point of view of the undertaking dated 20 March 2013 or de hors the undertaking from the point of view of infringement in the context of Section 29(2) of the Trade Marks Act. It appears to me to be clear that the defendants cannot be permitted to use the mark TOWER for dry fruits.
54. Insofar the undertaking is dated 20 March 2013 is concerned, I cannot agree with the manner in which Mr. Sibal would seek to interpret it. To my mind, it is perfectly clear that, in para (c) of the undertaking dated 20 March 2013, the defendants clearly and unequivocally undertook to restrict the use of the mark TOWER, insofar as Classes 1 and 29 were concerned, only to MSG, citric acid, tartaric acid, green raisins, camphor, hexamine tablets. Significantly, none of the defendants has chosen to question the existence of the undertaking, or the fact that it has been signed on behalf of Defendant 4, at a time when Defendants 1 to 3 were partners of Defendant 4.
55. While examining the issue of the entitlement of the plaintiff to interim injunction, under Order XXXIX Rules 1 and 2 of the CPC, in which principles of equity predominate, the defendants cannot be permitted to resile from the said undertaking. This is all the more so as, on the basis of the said undertaking dated 20 March 2013, the plaintiff withdrew its Opposition No. 767486 to Application No. 1655205 of the defendants, for registration of the device mark for MSG, citric acid chemicals in Class 29. Having, thus, made the plaintiff act to its detriment, on the basis of the undertaking held out by them, the defendants cannot seek to turn back and oppose the attempt of the plaintiff to enforce the undertaking, or violate the undertaking in any manner.
56. Neither Clause (d) nor clause (f) of the undertaking can, in my view, dilute the impact of clause (c). In so far as goods in Classes 1 and 29 are concerned, clause (c) unequivocally undertakes that the defendants would not use the mark TOWER for any goods other than the six goods mentioned in clause (b), i.e. MSG, citric acid, tartaric acid, green raisin, camphor and hexamine tablets. There is no dispute that dry fruits fall within Class 29. The only dry fruits in respect of which the defendants could use the mark TOWER, were, therefore, green raisins and none other.
57. Even if one were to interpret clause (d) as expanding the scope of clause (c) and allowing the defendants to use the mark TOWER for goods covered by Class 29 other than MSG, citric acid, tartaric acid, green raisins, camphor and hexamine tablets, but which were not of interest to the plaintiff, I am in agreement with Mr. Lall that it is for the plaintiff to decide which goods would be of interest to it. The defendants cannot presume that dry fruits are not of interest to the plaintiff. Moreover, dry fruits cannot be treated as completely unrelated to the goods in respect of which the plaintiff possessed registration in Classes 29 and 30.
58. In conjunction with the above, even if one were to go along with Mr. Sibals contention that the present case has to be viewed de hors the undertaking and from the anvil of Section 29(2) of the Trade Marks Act, a prima facie case for injunction would nonetheless be made out in the plaintiffs favour. Section 29(2)(b) of the Trade Marks Act includes, within the ambit of infringement, the use of any identical or similar mark, for goods or services which are identical or similar, in a manner which is likely to result in confusion or association between the impugned mark and the asserted mark. The submission of Mr. Sibal that dry fruits are not allied or cognate to the goods in respect of which the TOWER mark was registered in favour of the plaintiff, cannot, prima facie, merit acceptance. There cannot be any dispute about the fact that dry fruits and raisins are routinely used in bakery products and are also consumables, like bakery products in respect of which the plaintiff held registration. Both the products are admittedly classifiable under Class 29 of the NICE classification.
59. If, therefore, a consumer of an average intelligence and imperfect recollection were to find that bakery products such as MSG, citric acid, tartaric acid, green raisin, camphor, hexamine tablets and dry fruits such as pistachios, walnut, cashew nut and almonds were being sold using the mark TOWER, there is every likelihood of his, at the very least, presuming an association between the two. The use of the mark TOWER for dry fruits, by the defendants, therefore also results in a prima facie case of infringement within the meaning of Section 29(2)(b) of the Trade Marks Act.
60. Where infringement of trademark is found to exist, immediate injunction is generally the rule, as held by the Supreme Court in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia9. Even otherwise, as the injunction is only against use, by the defendants, of the mark TOWER for dry fruits and the defendants are for the present entitled to use it for other products, the considerations of balance and convenience and irreparable loss would also justify grant of interim injunction.
Conclusion
61. For all the aforesaid reasons, the plaintiff is entitled, in my view, to an interlocutory injunction restraining the defendants from using the mark TOWER, in any form whatsoever for manufacture and sale of dry fruits, including but not limited to pistachios, walnut, cashew nuts and almonds.
62. The present application is, therefore, allowed to the aforesaid extent.
C. HARI SHANKAR, J.
MARCH 4, 2024
dsn/rb
1 2018 9 SCC 183
2 (1997) 4 SCC 201
3 (2008) 37 PTC 497
4 2021 SCC OnLine Del 1539
5 MANU/TN/1356/2022
6 2017 SCC OnLine Del 11393
7 2019 SSC Online Del 11948
8 (2020) 3 SCC 311
9 (2004) 3 SCC 90
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