MOTHER DAIRY FRUITS & VEGETABLES PVT. LTD. & ANR. vs M/S MAA BAISNAVI ENTERPRISES AND OTHERS
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 8th December, 2023
+ CS(COMM) 83/2018
MOTHER DAIRY FRUITS & VEGETABLES
PVT. LTD. & ANR. ….. Plaintiffs
Through: Mr. Pravin Anand, Adv.
versus
M/S MAA BAISNAVI ENTERPRISES
AND OTHERS ….. Defendants
Through: Ms. Madhumita Bhattacharjee, Adv.
for D-3&4. (M:9811785211).
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The Plaintiff Nos. 1 & 2 – Mother Dairy Fruits & Vegetables Pvt. Ltd., Gujarat and National Dairy Development Board (NDDB) filed the present suit primarily against the Defendant No. 3- West Bengal State Cooperative Milk Producers Federation Limited as also Defendant No. 4-Mother Dairy, Calcutta, a unit of the said company and two retailers, who were selling mother dairy milk in Jharkhand i.e., Defendant No.1- M/s Maa Baisnavi Enterprises and Defendant No.2-M/s. Satsang Enterprises.
3. The case of the Plaintiffs is that the NDDB was constituted under the NDDB Act, 1987. It was a government company incorporated for the purpose of implementing a major dairy development project commonly known as Operation Flood. The said NDDB had financed Mother Dairy, which operates at Delhi for manufacturing and marketing of milk products, under the Operation Flood programme. The said Mother Dairy at Delhi was commissioned in the year 1974 and started using the brand name Mother Dairy. The Plaintiff No.1 was thereafter formed as a subsidiary of the Plaintiff No.2-NDDB and took over the operation of the Mother Dairy at Delhi.
4. The trademark MOTHER DAIRY was adopted by the Plaintiffs in the year 1974 and since then has been used for a large range of milk and milk related products including butter, liquid milk, ice cream, dairy whiteners etc. The mark has been used on packaging material, invoices/advertisement and promotional material including handouts, POP materials, displays, billboards etc. The Mother dairy logo is also registered as a well- known logo, which is extracted below:
5. The mark Mother Dairy is also registered in various classes including classes 29 & 30. The said registrations have been set out below:
6. In the present case, the Plaintiffs were aggrieved on the use of the mark Mother Dairy by Defendant No.3 & 4 as also their retailers, outside the State of West Bengal. The Mother Dairy, Calcutta was originally owned by the government of West Bengal and the management was taken over by the Plaintiff No.2-NDDB in the year 1978. Thereafter, NDDB handed over the management of the Mother Dairy, Calcutta to the Defendant No.3- West Bengal State Cooperative Milk Producers Federation Ltd.
7. The Mother Dairy, Calcutta-Defendant No.4 continued functioning in West Bengal and had applied for registration of the mark Mother Dairy, Calcutta in July, 2004. The Plaintiffs became aware that an application for the mark MOTHER DAIRY CALCUTTA bearing no. 1294520 in class 29 was filed by the Defendant No. 4. At that stage, an agreement dated 20th September, 2004 was entered into between the Plaintiffs and the Mother Dairy, Calcutta, to enable Mother Dairy, Calcutta to use the mark Mother Dairy. Under the said agreement, Mother Dairy was to be used only for liquid pasteurized milk, processed and marketed by the Defendant No. 4 within the State of West Bengal. As per clause 2 of the said agreement, the Defendants had also agreed to adopt a new trademark in respect of all other milk products. Thereafter it is averred that on 5th September, 2008 the Plaintiff No.1 sent a letter to the Defendant No.3 asking them to withdraw the aforesaid application. It is averred that since, there was no response to the letters dated 5th September, 2008 and 7th November, 2008 by the Defendant No.3, the Plaintiff No.1 opposed the said registration.
8. The Defendant No.3 vide letter dated 10th March, 2005, addressed to the Plaintiff No. 2, assured that they are adopting a new common brand BENS and will only use Mother Dairy, Calcutta for liquid pasteurized milk. It is stated that in December, 2008 the Plaintiffs became aware that Mother Dairy Calcuttas milk, curd, paneer and ghee were available in Ranchi, Jharkhand and that Defendant No.1is the distributor of Defendant No. 4s products in the state of Jharkhand. Since the Defendant Nos.3 & 4 had started selling the mother dairy milk in Jharkhand, the present suit came to be filed.
9. The suit came up for hearing on 12th January, 2009. The Court had granted an ex-parte injunction in the following terms.
The plaintiffs in the circumstances have a good prima facie case. It is also contended that in case the defendants continue to violate the agreement dated 20th September, 2004 and continue to violate their trade mark and continue to pass off their goods as that of plaintiffs, it will cause irreparable loss to the plaintiffs. The plaintiff is entitled in the facts and circumstances for an ex-parte interim order against the defendants.
Consequently in the facts and circumstances, the defendants, their agents or any person acting on behalf of the defendants are restrained from using the name/mark “Mother Dairy” in respect of pasteurized milk or any other type of milk or any milk product in any other states in India except West Bengal till the next date of hearing.
Plaintiff to comply with the provision of Order 39 Rule 3 CPC.
10. As per the above order, use of the mark Mother Dairy outside West Bengal stood injuncted. The said order continued to operate.
11. The trial has also been concluded in this suit. The matter was ripe for final hearing. On 13th September, 2023, ld. Counsel for the Defendants had pointed out that the name of Defendant No.3 has been changed from Mother Dairy to Banglar Dairy Limited. Accordingly, the following order was recorded:
3. It has also been pointed out that the Defendant has already changed its mark from ‘Mother Dairy’ to ‘Banglar Dairy Limited’ and no longer uses the mark ‘Mother Dairy’. If so, an affidavit be filed on record along with the relevant documents so that the same can be considered on the next date of hearing.
4. Let a competent official of the Defendant be present on the next date of hearing.
12. Pursuant thereto, an affidavit of Mr. Nirmalya Ranjan Sarkar, Manager (Marketing) of Defendant No.4 has been filed before the Court. In terms of the said affidavit, the deponent has stated that the name of Mother Dairy has been changed to Banglar Dairy Limited. Extracts of the said affidavit are set out below:
2. That it is most respectfully submitted that vide notification no. 1484-MK/AD/O/2A-02/2014, dated 17/08/2015 the Governor of West Bengal was pleased to accord approval to the formation of a fully owned government company namely, Banglar Dairy Limited having registered office at Dankuni, Hooghly, West Bengal and thus all milk and milk products under the brand name of Mother Dairy Calcutta has been changed to Banglar Dairy Limited. A copy of the notification no. 1484-MK/AD/O/2A-02/2014, dated 17/08/2015 issued by Secretary to the Government of West Bengal is annexed hereto and marked as Annexure R4/1.
13. Along with the said affidavit, notification dated 17th August, 2015 has been placed on record. The same has been issued by Animal Resources Development Department, Milk Branch, Government of West Bengal, which states as under:
2. After careful consideration of the matter the Governor of West Bengal is pleased to accord approval to the formation of a fully owned government company namely, Banglar Dairy Limited having registered office at Dankuni, Hooghly, W.B. on the following conditions: –
i) All assets, liabilities and undertaking of the Mother Dairy Calcutta will be acquired by the new company;
ii) The company will carry on the business of manufacturers, purchasers, processors, growers, makers, importers, exporters, buyers, sellers, dealers, freezers, distilled water suppliers, stockists, agents, contractors, merchants, distributors, wholesalers, retailers, concessionaires, supplier of milk and milk products like milk cream, ice-cream, butter, ghee, lassi, milk powder, condensed milk, dahi, flavoured yoghurt, paneer, other dairy produces/products and products of daily needs;
14. On the last date of hearing i.e., 22nd November, 2023, Mr. Sarkar was present in court and had confirmed the above position. Ld. counsel for the Plaintiffs was to seek instructions. Today ld. Counsel for the Plaintiffs submits that milk currently being sold is under the mark Banglar Dairy. However, in the processed packaging address the name Mother Dairy, Calcutta continues to appear. The sample packaging which is available in the market is set out below:
15. Since the categorical stand of the Defendant Nos.3 & 4 now is that the name has been changed from Mother Dairy, Calcutta to Banglar Dairy Limited, the Defendants shall henceforth use the mark/name Banglar Dairy. There shall be no use of the mark Mother Dairy on any of the products, packagings, bill vouchers, advertising or for promotion. The Defendants shall, accordingly, remove the name Mother Dairy, Calcutta from the packaging within three months. Compliance affidavit be filed and a copy may be served. If there is non-compliance, the Plaintiffs are free to move an application.
16. In view of the above, the Plaintiffs are free to take steps in this relation to the licensing agreement dated 20th September, 2004 in accordance with law. The Plaintiffs, also accordingly, do not press any damages and costs in this matter.
16. The suit is disposed of accordingly.
PRATHIBA M. SINGH
JUDGE
DECEMBER 08, 2023/dk/ks
CS(COMM) 83/2018 Page 2 of 2