VICKY AGGARWAL & ORS. vs A B MAURI INDIA PRIVATE LIMITED
$~61
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision: 09.07.2024
+ FAO(OS) (COMM) 127/2024, CM Nos.36668/2024, 36669/2024 & 36670/2024.
VICKY AGGARWAL & ORS. ….. Appellants
Through: Mr Amit Sibal, Senior Advocate with Mr Prashant Mehta and Mr Raghav Marwaha, Advocates.
Versus
AB MAURI INDIA PVT. LTD. ….. Respondent
Through: None.
CORAM:
HON’BLE MR. JUSTICE VIBHU BAKHRU
HON’BLE MR. JUSTICE SACHIN DATTA
VIBHU BAKHRU, J.
1. The appellants (nine in number) have filed the present appeal impugning a judgement dated 04.03.2024 (hereafter the impugned judgement) rendered by the learned Single Judge allowing the application [being I.A. No. 19498/2022] filed by the respondent (plaintiff in the suit) under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (hereafter the CPC) in CS (COMM) 810/2022 captioned A.B. Mauri India Private Limited v. Vicky Aggarwal & Others.
2. The respondent (hereafter referred to as the plaintiff) had filed the above-mentioned appeal, inter alia, seeking a decree of permanent injunction restraining the appellants (arrayed as defendants in the suit) from infringing or passing off the plaintiffs registered trade mark TOWER and other formative marks. The plaintiff had also sought a decree for rendition of accounts or in the alternative damages quantified at ?2,00,00,000/-
3. The appellants were allegedly using the trade mark TOWER in connection with the following products; (i) Monosodium Glutamate, Citric Acid and Tartaric Acids in Class 1; (ii) camphor tablets, camphor (not for medicinal use), iso-borneol tablets, thymol & menthol, burning slab etc. in Class 3; (iii) green raisins, dry fruits, processed or roasted nuts, fresh nuts, popcorns and pickles in Class 29; and, (iv) spices, seasoning, condiments and saffron in Class 30.
4. The learned Single Judge allowed the plaintiffs application and has, by the impugned judgment, interdicted the appellants from using the trade mark TOWER in any form whatsoever for manufacture and sale of dry fruits including but not limited to pistachio, walnuts, cashew nuts and almonds.
5. The appellants being aggrieved by the said decision (impugned judgment) have preferred the present appeal.
FACTUAL CONTEXT
6. Appellant no.1 is an individual and carries on his business under the name of his proprietorship concern Hainey Global (arrayed as appellant no.4). He is engaged in the manufacture and trade of products such as Monosodium Glutamate and camphor etc. Appellant no.3 carries on his business under the name of his proprietorship concern Modern Processing Works (arrayed as appellant no.9). Appellant no.6 is a company incorporated on 13.09.2021 under the provisions of the Companies Act, 2013. Appellant nos.5,7 and 8 are partnership firms constituted by appellant nos.1 and 2 as partners.
7. The plaintiff claims that it was incorporated on 31.03.1960 as Indian Yeast Company. In the year 1996, it changed its name to Burns Philip India Pvt. Ltd. and in the year 2004 it once again changed its name to its current name AB Mauri India Pvt. Ltd. The plaintiff claims that it is a part of a heritage that spans over 150 years as the AB Mauri division of Associated British Foods PLC. Associated British Foods PLC (ABF) of London, United Kingdom is a diversified international food ingredient and retail group that operates through various business segments.
8. The plaintiff claims that the AB Mauri division of the said group has its operations in more than thirty countries.
9. The plaintiff claims that AB Mauri has invested in TOWER branded products in India, Bangladesh, Bhutan, Nepal and Pakistan over several years.
10. The plaintiff claims that it is the owner of several registered trademarks. A tabular statement setting out the trade marks as well as their current status is set out below:
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
east.
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 bakery preparations viz. glycerol mono stearate powder.
Registered
725136
04/10/1996
30
Ingredients in the preparation of cake and bakery preparations viz. glycerol mono stearate powder.
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
7251342
04/10/1996
30
Food flavouring agents in the preparation of cake and similar bakery preparation falling under class 30.
Registered
7251343
04/10/1996
30
Flavouring agents in the preparation of cake and similar bakery preparation falling under class 30.
Registered
7251344
04/10/1996
30
Flavouring agents in the preparation of cake and similar bakery preparation falling under class 30.
Registered
7251345
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 1mprovers,
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 1mprovers,
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 1mprovers;
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 2 14/09/2017
2
Colorants for
foodstuffs, food
and beverages; additives for use as
colorants for
foodstuffs, food
and beverages.
Registered
11. The appellants also used the mark TOWER in respect of various goods falling in Classes 1, 29 and 30 of the NICE classification. The appellants had also applied for registration of their trade marks in the said classes. A tabular statement setting out the details of various trademarks applied for by the appellants and the current status of the applications is set out below:
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:
M/s 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:
M/s Hainey Global
Registered
01;
Mono sodium glutamate and 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
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.
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 &
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 jams snack foods.
Preserved,
fruit sauces,
popcorn
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
12. The plaintiff avers that on 29.09.2010 it opposed (by Opposition No. 767486) an application bearing number 1655205 filed by appellant no. 4 seeking registration of the trademark in Class 1 for monosodium glutamate (MSG) and citric acid chemicals.
13. It is the case of the plaintiff that in January 2013 it learned about the use of the trademark TOWER by appellant no.4 for goods including MSG, citric acid, tartaric acid, green raisins, camphor, copper sulphate, Hexamine, damar batu and mercury. Thereafter, by a Cease and Desist Notice dated 30.01.2013, it called upon appellant no. 4 to restrict its use of the trademark TOWER in relation to goods falling in Class 1 and not to expand its use to goods falling in Class 30 or any other related classes.
14. In response to the aforesaid notice, the appellants undertook not to use the trade mark TOWER in respect of certain goods. The said undertaking (hereafter the Undertaking), furnished in terms of the letter dated 20.03.2013, is central to the controversy in the present appeal and is set out below:
To, Date: 20/3/2013
AB Mauri India (P) Ltd.
Plot No. 218 & 219,
Bommasandraligni 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 otter 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
15. The plaintiff claims that pursuant to the Undertaking, it sent a letter dated 27.01.2015 and withdrew its opposition (Opposition No.767486) to appellant no.4s application (Application No.1655205) for registration of the trade mark in respect of Monosodium Glutamate, Citric Acid and chemicals in Class 1.
16. The plaintiff instituted the suit [CS(COMM) No.810/2022] being aggrieved by the appellants using the trademark TOWER and other deceptively similar marks in respect of various other goods. The principal dispute relates to the use of the trade mark in respect of dry fruits including pistachio, walnuts, cashew nuts and almonds. The plaintiff claims that the use of the trade mark by the appellants infringes its trade mark TOWER which, it claims, is a well-known trademark.
IMPUGNED JUDGMENT
17. The learned Single Judge, prima facie, found that the use of the trademarks by the appellants infringes the plaintiffs trademark and is also in violation of the Undertaking dated 20.03.2013. The learned Single Judge, thus, concluded that the appellants could not be permitted to use the trade mark TOWER for dry fruits. The learned Single Judge rejected the contention that the Undertaking did not cover the use of the trademark TOWER in respect of dry fruits, as the same were not goods of interest to the plaintiff. The learned Single Judge observed that paragraph (c) of the Undertaking restricted the use of the trademark TOWER for any goods other than those mentioned in clause (b) in Class 1 and Class 29. Thus, the appellants could not use the trade mark TOWER in respect of goods falling under Class 29 and there is no dispute that dry fruits fall within the said Class.
SUBMISSIONS
18. Mr. Amit Sibal, learned senior counsel appearing for the appellants sought to assail the impugned judgment essentially on three grounds. First, he submitted that the plaintiff is engaged in the business of products used in baking and therefore, could not interdict the use of the trade mark TOWER in respect of other goods. He submitted that the plaintiff does not hold registration of the trade mark TOWER in respect of dry fruits. Further the plaintiff is also not engaged in selling such goods. He thus, submitted that there is no possibility of any confusion as the goods in respect of which the appellants are using the mark in question, were completely different from those dealt with by the plaintiff. He further submitted that the channels of sale were also completely different. Further, he submitted that dry fruits could not be considered as allied or cognate to the goods dealt with by the plaintiff. Second, he submitted that the learned Single Judge had erred in interpreting the Undertaking furnished by appellant nos.1 and 4. He contended that the Undertaking permitted the use of the trade mark TOWER in respect of goods that were not similar to those dealt with by the plaintiff.
19. Third, he submitted that the terms of the Undertaking could bind only appellant nos.1 and 4 and not the other appellants. He submitted that the learned Single Judge had erred in proceeding on the basis that appellant no.4 was a firm and appellant nos.2 and 3 were constituent partners of the said firm. He contended that appellant no.4 was the sole proprietorship concern of appellant no.1 and the same was acknowledged by the plaintiff in its replication.
REASONS & CONCLUSION
20. We find no merit in the contentions advanced on behalf of the appellants. The learned Single Judge had, prima facie, concluded that a case for infringement was made out under Section 29(2)(b) of the Trade Marks Act, 1999 (hereafter the Trade Marks Act) . Section 29(2) of the Trade Marks Act is set out below:
29. Infringement of registered trade marks
* * *
(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.
21. In the present case, there is no dispute that the trademark used by the appellants in connection with dry fruits is similar to the plaintiffs trade mark TOWER. However, the appellants contend that Section 29(2)(b) of the Trade Marks Act is not applicable because the goods are not similar. In terms of Section 29(2)(b) of the Trade Marks Act, use of a mark similar to a registered trade mark, which is likely to cause confusion on the part of the public or is likely to indicate association with the registered trademark because of the similarity of the mark with the registered trademark and identity or similarity of goods and services covered by the said trademark would be infringing use. Thus, use of the trademark similar to a registered trademark in respect of allied or cognate goods which are likely to cause confusion or indicate association with the registered trademark, would constitute infringement of the registered trademark in terms of Section 29(2)(b) of the Trade Marks Act. The learned Single Judge had rejected the contention that dry fruits are not allied or cognate to the goods in respect of which the trade mark TOWER is registered in favour of the plaintiff. The learned Single Judge had reasoned that dry fruits and raisins were commonly used in bakery products. Further, both the products in respect of which the plaintiffs trade mark is registered and dry fruits fall in the same class Class 29 of the Nice Classification. We concur with the said reasoning. Undisputedly, dry fruits are commonly used in bakery products. It is quite likely that the use of similar trade marks in respect of bakery products and dry fruits would lead to a presumption of association between the marks viewed from a standpoint of a person of average intelligence and imperfect recollection.
22. It is also relevant to refer to paragraph 8 of the opposition filed by appellant no.2 to the plaintiffs application (Application no.2213665) for registration of the trade mark TOWER in Class 30. The same is reproduced below:
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.
23. It is seen that the appellants had acknowledged that the goods in respect of which appellant no.2 was using the trade mark was similar to the products dealt with by the plaintiffs.
24. The contention that the Undertaking did not prohibit use of the trade mark TOWER in respect of dry fruits is also unpersuasive. In terms of Clause (c) of the undertaking, the use of the trademark TOWER was confined to only those products as mentioned in Clause (b) viz. (i) Monosodium Glutamate; (ii) Citric Acid; (iii) Tartaric Acid; (iv) Green Raisins; (v) Camphor; and, (vi) Hexamine tablets. The person giving the Undertaking had also undertaken not to sell or offer for sale any products or conduct any business in the future under the trade mark TOWER or any other 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. Thus, Clauses (b), (c) and (d) of the Undertaking read conjunctively clearly indicate that the Undertaking expressly covered all goods under Classes 1 and 29, save and except those specified in Clause (b) of the Undertaking.
25. The learned Single Judge did not accept the contention that dry fruits were excluded by virtue of Clause (d) of the Undertaking on the ground that the question as to which product under Class 29 would be covered by the Classes of the interest of the plaintiff is a matter to be considered by the plaintiff.
26. The contention that no appellant, other than appellant no.1 (appellant no.4), is bound by the Undertaking is also prima facie untenable. The record clearly indicates that appellant nos. 2 and 3 were held out as constituents of appellant no.4. Thus, notwithstanding that appellant no.4 may be the sole proprietorship of appellant no.1, the record indicates that appellant no.2 also himself held out as appellant no.4. The plaintiff in its plaint had set out the extracts of the submissions filed by appellant no.2 before the Trade Mark Registry under cover of its letter dated 05.05.2022. The said extracts are set out below:
a) Cited mark 01 belongs to the Applicant itself
It is submitted that the first cited mark under application nos. 1411775 in the name of Mr. Vinod Kumar Aggarwal belongs to the Applicant itself as Mr. Vinod Kumar Aggarwal, Mr. Vicky Aggarwal and Mr. Atule Agarwaal are partners of the same firm named as Hainey Global
.
b) Cited mark 02, 03 and 04 – Already settled between parties to co-exist:
The second, third and fourth cited mark TOWER under application No. 2213663, 2374913 and 2374917 filed by AB Mauri India Pvt. Ltd. are not in conflict with the present application as the present applicant has entered into a settlement agreement with the cited applicant AB Mauri and the present application is filed as per the terms and conditions mentioned in the agreement. Hence, the marks can co-exist in view of the settlement. The settlement deed and various other documents filed by the attorneys (AZB Partners) of the cited applicant AB Mauri Pvt. Ltd. are filed herewith as Annexure B
27. It is not disputed that such a statement was made to the Trade Marks Registry. Undisputedly, appellant nos.1,2 and 3 are closely related (appellant no.3 is the father of appellant nos.1 and 2). The appellants do not claim that appellant no.3 was not aware of the representations made by appellant no.2.
28. The learned Single Judge had also noted appellant no.2s opposition dated 27.04.2018 to the plaintiffs application for registration of the trade mark in Class 30. The relevant extract from appellant no.2s opposition as set out in the impugned judgement is reproduced below:
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
EVERYDA
Y
3618273
1
22/08/2017
ATULE AGARWAL
4
TOWER
123
3618275
1
22/08/2017
ATULE AGARWAL
5
TOWER
ENJOY
3618278
1
22/08/2017
ATULE AGARWAL
10
TOWER
123
3618276
29
22/08/2017
ATULE AGARWAL
11
TOWER
EVERYDA
Y
3618274
29
22/08/2017
ATULE AGARWAL
12
TOWER
ENJOY
3618279
29
22/08/2017
ATULE AGARWAL
13
3107173
29
26/11/2015
ATULE AGARWAL
29. In view of the above, prima facie, we are unable to accept that the appellants would not be bound down by the Undertaking.
30. We are unable to accept that the learned Single Judge has exercised its discretion arbitrarily, or capriciously, or perversely or has ignored settled principles of laws regulating grant or refusal of interlocutory injunction. Thus, on the anvil of the standard as set out by the Supreme Court in Wander Ltd. & Anr. v. Antox India Pvt. Ltd.1, no interference in the impugned judgment is warranted.
31. The appeal is unmerited and is, accordingly, dismissed.
VIBHU BAKHRU, J
SACHIN DATTA, J
JULY 9, 2024
gsr
1 1990 Supp SCC 727
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