Full Judgment Text
IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: May 29, 2009.
FAO (O) No. 138 of 1996 & C.M.No. 842 of 2001
M/S. AMAR SINGH CHAWAL WALA ..... Appellant
Through: Mr. Valmiki Mehtra, Senior
Advocate with Mr. Gurvinder Singh,
Advocate.
versus
M/S. SHREE VARDHMAN RICE AND
GENL. MILLS ..... Respondent
Through: Mr. S.K. Bansal, Advocate.
CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? No
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
S. MURALIDHAR, J.
st
1. This appeal is directed against the impugned order dated 1 March
1996 passed by the learned Single Judge dismissing IA No.6222 of
1989 filed by the Plaintiff/Appellant in Suit No. 2247 of 1989).
FAO (OS) No. 138 of 1996 Page 1 of 25
2. The aforementioned suit was filed by the Plaintiff/Appellant seeking
a permanent injunction to restrain the Defendants/Respondents from
infringing the Plaintiff‟s registered trade marks in the device of
QILLA, the words GOLDEN QILLA (word per se), LAL QILLA
CHAPP (word per se), LAL QILLA (word and device mark) and
NEEL QILLA in relation to the goods for which they were registered,
i.e, rice. A decree of permanent injunction was also sought to restrain
the Defendants/Respondents from processing, selling or offering for
sale or dealing in rice or any other cognate or allied goods under the
trade mark HARA QILLA or the device of QILLA or any mark or
device deceptively similar to the Plaintiff‟s aforementioned registered
trade marks.
3. In this appeal the parties are referred to by their status in the suit.
Accordingly the Appellant is referred to as the Plaintiff and
Respondents 1 and 2 as the Defendants 1 and 2.
4. The case of the Plaintiff is that it is engaged in the selection,
processing and merchandising of rice since 1952. In the year 1954 the
plaintiff adopted GOLDEN QILLA (words per se) and the device of
FAO (OS) No. 138 of 1996 Page 2 of 25
QILLA as its trade mark so as to indicate its connection in the course
of trade with the goods of its selection, process and merchandise and
also as a proprietor thereof. In the year 1961, it adopted LAL QILLA
(words per se) and also the device of LAL QILLA as its trade mark to
indicate its connection in the course of trade with the goods of its
selection, manufacture and sale and also as a proprietor thereof.
Likewise in 1977, it adopted NEELA QILLA (words per se) and the
device of QILLA as its trade mark. According to the Plaintiff it has
used the aforementioned marks continuously and extensively in the
course of its trade from the dates of their respective adoption by it. Its
rice products have come to be identified and recognized by the
purchasing public and the trade as exclusively belonging to it. The
trade marks mentioned denote to the public and the trade that they are
the goods of the Plaintiff.
5. It is asserted that by virtue of their prior adoption, long, continuous
and established user coupled with the vast publicity given to its marks,
the Plaintiff has acquired an exclusive right to the use thereof as a
proprietor.
FAO (OS) No. 138 of 1996 Page 3 of 25
6. In the plaint the Plaintiff has set out the annual sales and publicity
expenses figures from the year 1970-71 till 1986-87. This has shown
a progressive increase.
7. According to the Plaintiff in addition to the common law rights, it
also held a statutory right to the exclusive use of the aforementioned
trade marks by virtue of registration granted under the Trade and
Merchandise Marks Act, 1958 as per the following details:
“Trade Mark Registration No. Goods Date
Device of QILLA 180418 Rice 16-11-1960
GOLDEN QILLA 201760 Rice 16-04-1962
(word per se)
LAL QILLA 202329 Rice 16-01-1962
CHAAP
(word per se)
LAL QILLA 249547 Rice 16-01-1970
(word &
Device Mark)
NEEL QILLA 337140 Rice 16-04-1979.”
8. According to the Plaintiff the Defendant No.1 Shree Wardhman
Rice & General Mills located at Panipat, Haryana is engaged in the
process and merchandise of rice and the Defendant No.2, M/s. Mamraj
FAO (OS) No. 138 of 1996 Page 4 of 25
Chuni Lal is the agent of Defendant No.1. According to the Plaintiff
the Defendants have adopted an identical and/or deceptively similar
mark HARA QILLA and the device of QILLA in respect of rice of
their process and merchandise. It was submitted that the adoption of
HARA QILLA and the device of QILLA by the Defendants is
malafide, dishonest, tainted and solely with a view to infringe the
aforementioned registered trade marks of the Plaintiff and to cause
confusion and deception among the users and the trade and to pass off
the goods and business of the Defendants as and for the goods and
business of the Plaintiff. It was submitted that unwary purchasers are
likely to be misled into considering the mark HARA QILLA and the
device of QILLA as one of the series of the Plaintiff‟s marks of
GOLDEN QILLA, LAL QILLA, NEELA QILLA and device of
QILLA. It is alleged that the Plaintiff was suffering loss in business as
well as in reputation because of the unlawful trade activities of the
Defendants.
9. The Plaintiff came to know in 1986 through an advertisement in the
newspaper „Vyapar Kesri‟ about the Defendants having adopted the
mark of HARA QILLA and the device of QILLA in connection with
FAO (OS) No. 138 of 1996 Page 5 of 25
the rice being sold by them. The Plaintiff immediately served a notice
th
dated 13 March, 1986 cautioning the defendants from using the said
mark and device. However, the Defendants did not raise any claim
against the averments made in the notice. The goods of the Defendants
under the impugned marks disappeared from the market. However the
Plaintiff was surprised to notice an advertisement of the Defendants‟
application under No. 435166 in the Trade Marks Journal No. 958
st
dated 1 May 1989 for registration of the HARA QILLA and device of
QILLA in respect of rice. The Plaintiff immediately filed an
th
opposition before the Registrar of Trade Marks on 8 May 1989. As
on the date of filing the suit the said opposition was pending. The
Plaintiff also learnt that the Defendants have restarted marketing the
rice under the impugned marks with impunity and therefore the suit
was filed.
10. In the aforementioned suit IA No. 622 of 1989 was filed seeking
an interim injunction restraining the Defendants from infringing the
Plaintiff‟s trade mark and not marketing the Defendant‟s goods under
the mark HARA QILLA and the device QILLA.
FAO (OS) No. 138 of 1996 Page 6 of 25
st
11. By the impugned order dated 1 March 1996, the learned Single
Judge rejected the plaintiff‟s prayer for an interim injunction. The
th
learned Single Judge noted that on 13 December 1993 the Assistant
Registrar of Trade Marks had sustained the opposition and rejected the
Defendant‟s application for registration of the trade mark HARA
QILLA. An application seeking review of the said order was also
th
rejected by an order dated 19 September 1994. The learned Single
Judge also referred to documents filed by the Plaintiff. It was noticed
that although neither party had brought on record photographs of the
respective trade marks, the photocopies of the trade marks registration
certificate were available. The learned Single Judge held that the
Defendant‟s device of QILLA was not identical or similar to the
QILLA used by the Plaintiff as its device either with GOLDEN
QILLA or QILLA. It was held that the colour scheme was not the
controversy either by way of imitation or by way of distinction. The
learned Single Judge on comparing the marks used by the Plaintiff as
well as the Defendant concluded as under:
“The device used by the plaintiff along with
GOLDEN QILLA is so materially different from the
device used by the defendant along with Hara Qilla
that there is no likelihood of the customer inclined to
FAO (OS) No. 138 of 1996 Page 7 of 25
purchase Lal Qilla Rice being deceived into
purchasing Hara Qilla rice. There is no visual or
phonetic similarity between the defendant‟s name
and mark- and the plaintiff‟s name and mark- either
of the three. Golden or Golden Qilla cannot be
confused with Hara Qilla. So is the case with Lal
Qilla and Neela Qilla.”
12. The learned Single Judge further held that “it is not suggested, nor
is it borne out from the record that the defendants have tried to present
their device of Qilla in such a manner as look similar or deceptively
similar with any of the device adopted by plaintiff. It is not the case of
the plaintiff that any of the defendants has at any time attempted at it
passing off the defendants goods as those of the plaintiff.” The learned
Single Judge also rejected the plea of the Plaintiff that the continuous
use of trade names GOLDEN QILLA, LAL QILLA, NEELA QILLA
for a number of years prior to the filing of the suit shows that the
Plaintiff had developed a „family of marks‟ on the ground that merely
because a mark belonged to a „family of marks‟ it was not exempt
from the standard test of trade mark protection.
13. On behalf of the Plaintiff it was contended that the Defendants had
FAO (OS) No. 138 of 1996 Page 8 of 25
actually failed to indicate how they came across the words „HARA
QILLA‟ and the device of QILLA if indeed Defendant No.1 was in the
th
trade of marketing rice since 7 December 1978. It is pointed out that
Defendant No.1 made an application for registration of its mark and
device only in 1989. It was therefore submitted that the use of the
mark HARA QILLA and the device QILLA cannot be said to be an
honest. It is further submitted that the use cannot also be said to be
concurrent since no bills or invoices had been produced by the
Defendants to show that they were using the marks since 1978. It was
submitted that the mere fact that this appeal had been pending for over
12 years should not be a reason ground to reject the prayer of the
Plaintiff for an interim injunction since the impugned order was
constituting a precedent for others to infringe the registered marks and
device of the Plaintiff with impunity. It was contended that the
continuous infringement of the registered marks of the Plaintiff by the
Defendants was justification for persisting with the plea of interim
injunction despite the fact that the present appeal was pending for a
long time. In any event the main suit was also pending and was
unlikely to conclude at an early date. Reliance was placed on the
observations of this Court in Hindustan Pencils Private Limited v.
FAO (OS) No. 138 of 1996 Page 9 of 25
Universal Trading Company 2000 PTC 561 (DB) . Reliance was
placed on a number of decisions which will be discussed hereafter.
14. On behalf of the Defendants it was submitted that the trade mark
HARA QILLA was not identical or deceptively similar to the trade
mark sought to be enforced by the Plaintiff. According to the
Defendants the words HARA QILLA and LAL QILLA conveyed
different and distinct identities. The word QILLA was per se of no
significance. The marks of the Plaintiff and that of the Defendant
No.1 were not deceptively similar so as to cause confusion in the mind
of the buyer. Moreover, the Plaintiff had not approached the Court
despite the defendant No. 1 using the mark since 1978 and therefore
had acquiesced in the use by the defendants of the mark and device of
HARA QILLA and QILLA. It was submitted that the mere fact that
the Registrar of Trade Marks had accepted the opposition of the
Plaintiff to the application made by the Defendants for registration of
their mark HARA QILLA could not determine the question of grant of
interim injunction. The Plaintiff was required to make out a prima
facie case in its favour on the basis of materials brought on record in
the suit. In any event the order of the Assistant Registrar of Trade
FAO (OS) No. 138 of 1996 Page 10 of 25
Marks was challenged in this Court in C.M. (Main) No. 165 of 1995.
It was submitted that a registered trade mark only raises a presumptive
right and it was not necessary that an injunction has to follow.
Reliance was placed upon the decisions in N.R. Dongre v. Whirlpool
Corporation AIR 1995 DELHI 300 , Amritdhara Pharmacy v. Satya
Deo AIR 1963 SC 449, Mahendra & Mahendra Paper Mills Ltd. v.
Mahindra & Mahindra Ltd. JT 2001 (9) SC 525, Corn Products
Refining Company v. Shangrila Food Products Ltd. PTC (Suppl) (1)
13 (SC), F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners &
Co. Pvt. Ltd. PTC (Suppl) (1) 88 (SC) . The Defendants relied on the
decisions in Power Control Appliances v. Sumeet Machines Pvt. Ltd
1995 PTC 165 , Bali Trade Mark (No.2) Fleet Street Reporter [1978]
193 to contend that honest and concurrent user by the defendants of
the registered marks of the Plaintiff would justify the refusal of
injunction to the Plaintiff. Learned counsel for the Defendants relied
upon the observations in Power Control Appliances to contend that
the delay and laches in the Plaintiff approaching the Court for relief
could be fatal to its case for grant of injunction. It was contended that
the appropriate order for this Court was to expedite the trial of the suit
itself.
FAO (OS) No. 138 of 1996 Page 11 of 25
15. The submissions of the parties have been considered. It is not in
dispute that the Plaintiff has in its favour registration of the four marks
and devices as noticed hereinbefore. The suit filed by the Plaintiff is
essentially one for infringement in respect of the Plaintiff‟s trade mark
on the ground that the use by the Defendants of the mark and device
HARA QILLA and QILLA respectively would cause confusion and
deception among the users and the trade in general. The distinction
between a suit based on infringement and that based on passing off
was explained by the Supreme Court in Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC
980 . It was explained that “while action for passing off is a common
law remedy being in substance an action for deceit, that is, a passing
off by a person of his own goods as those of another, that is not the
gist of an action for infringement. The action for infringement is a
statutory remedy conferred on the registered proprietor of a registered
trade mark for the vindication of the „exclusive right to the use of the
trade mark in relation to those goods.‟ The use by the Defendant of
the trade mark of the Plaintiff is not essential in an action for passing
off, but is the sine qua non in the case of an action for infringement.”
It was further noticed that “where the evidence in respect of passing
FAO (OS) No. 138 of 1996 Page 12 of 25
off consists merely of the colourable use of a registered trade mark,
the essential features of both the actions might coincide, in an action
for infringement, the Plaintiff must, no doubt, make out that the
defendant’s mark is so close either visually, phonetically or
otherwise and the Court should reach the conclusion that there is an
imitation” in which event it would be established that the Plaintiff‟s
rights are violated. The Supreme Court went on to further explain that
“ if the essential features of a trade mark of the Plaintiff have been
adopted by the defendant, the fact that the get up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sales show marked differences, or indicate
clearly a trade origin different from that of the registered
proprietor of the mark would be immaterial ; whereas in the case of
passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
Plaintiff.” (emphasis supplied)
16. In Amritdhara Pharmacy v. Satya Deo the question of phonetic
similarity between Amritdhara and Lakshmandhara was considered. It
was said that “an unwary purchaser of average intelligence and
FAO (OS) No. 138 of 1996 Page 13 of 25
imperfect recollection would not split the name into its component
parts and consider the etymological meaning thereof or even consider
the meaning of the composite words as „current of nectar‟ or „current
of Lakshman‟. Where the trade relates to goods largely sold to
illiterate or badly educated persons, it is no answer to say that a person
educated in the Hindi language would go by the etymological or
ideological meaning and see the difference between „current of nectar‟
and „current of Lakshman‟. It was emphasized that the whole word
had to be considered. It was held that “the overall similarity between
the two names in respect of the same description of the goods would
likely to cause confusion within the meaning of Section 10(1) of the
Trade Marks Act, 1940.”
17. In the instant case as far as the registered marks in favour of the
Plaintiff are concerned, applying the test laid down in Kaviraj Pandit
it is seen that the essential feature of the mark is the word „QILLA‟.
Whether the word is spelt as QILLA or KILLA, or even written in a
different style or colour combination. To the customer who seeks to
purchase the QILLA brand rice both names would sound phonetically
similar. The customer is likely to ask the retailer: “Can I have the
FAO (OS) No. 138 of 1996 Page 14 of 25
QILLA brand rice?” In the considered view of this Court, it is this
essential feature of the Plaintiff‟s mark, i.e the word QILLA, which
has been adopted by the Defendant No.1. That the defendants have
also used a pictorial representation of the device in the form of a fort
also indicates that the Defendants too intended the same meaning to be
assigned to the word, which is an Urdu one meaning “fort”.
Therefore, though the device QILLA is depicted in a slightly different
way by the defendant, it is deceptively similar to the device used by
the Plaintiff. Further the use is in respect of the same commodity, rice.
Therefore there is every possibility f there being a confusion created in
the mind of the purchaser of rice that the product being sold by the
Defendant is in fact a product that has emanated from or has been
manufactured by the Plaintiff.
18. It is not possible to agree with the reasoning of the learned Single
Judge that the word QILLA is not associated with rice and therefore
no ordinary purchaser of rice would associate the Defendant‟s mark as
that of the Plaintiff‟s. It is plain from the pleadings that the Plaintiff
has been using the words QILLA consistently in connection with the
rice being sold by them with only the first word indicating the colour
FAO (OS) No. 138 of 1996 Page 15 of 25
viz., GOLDEN, LAL or NEELA. It must be held that the Plaintiff has
been able to prima facie show that it has developed a „family of
marks‟ and that by merely changing the first word from GOLDEN,
LAL or NEELA to the word HARA there is every possibility of
confusion being caused both in trade and in the mind of any person
desiring to purchase rice. Likewise the use of the picture or depiction
of a fort in the background on the label/packing of the rice is also
likely to cause confusion in the mind of the purchaser and in the trade
that the product being sold by the Defendants are in fact those
manufactured by the Plaintiff.
19. This Court proposes to next consider the plea of the Plaintiff that
use by the Defendants of the said marks was not in fact an honest one
since the Defendant did not indicate how it came across the
word/device associated with its product rice. It must be remembered
that the Plaintiff has been in trade since 1962 onwards and it has been
marketing its rice by using the words and device of QILLA. These
words, as rightly pointed out by the learned Single Judge, do not
automatically get associated with a consumable food product like rice.
For the Defendants to have chance upon the same word i.e. QILLA
FAO (OS) No. 138 of 1996 Page 16 of 25
and the same device in terms of depiction of a fort would have to be
supported by its showing how it got inspired to use those words. It is
not possible therefore to accept the plea of the Defendants that in the
instant case, there was an honest concurrent use. The legal position
was succinctly explained by the House of Lords in Alex Pirie & Sons’
Application (1933) 50 R.P.C. 147 where it was held as under:
“Secondly, the appellants say, and this is their main
line of attack upon the conclusion of the Court of
Appeal, that though the respondents were honest in
their user in the sense that they never intended to
cause confusion or to pass off their goods as the
goods of the appellants, yet inasmuch as they knew
of the appellants‟ mark when they adopted their own
and that the marks have been used on the same
goods in the same market, the user of the
respondents‟ mark cannot be treated as honest within
the meaning of the section and that in any case by
refusal of registration there would not in these
circumstances be the hardship to the respondents
which the section is intended to prevent.
“My lords, it has never been suggested throughout
this case that the conduct of the respondents has in
the slightest respect been open to criticism, and I
should be sorry to place upon this statute a
FAO (OS) No. 138 of 1996 Page 17 of 25
construction which would brand as statutory
dishonesty conduct justified in the eyes of
honourable men. There is in fact no ground for
doing so. Knowledge of the registration of the
opponent‟s mark may be an important factor where
the honesty of the user of the mark sought to be
registered as impugned, but when once the honesty
of the user has been established the fact of
knowledge loses much of its significance, though it
may be a matter not to be wholly overlooked in
balancing the considerations for and against
registration.”
20. In the considered view of this Court, the defendants have not been
able to demonstrate prima facie honest use of the mark. They have
also not been able to show concurrent user of the mark or device. The
Plaintiff is right in pointing out that no invoices or bills since 1978
have been placed on record by the defendants to substantiate this plea.
Whatever has been placed on record does not prima facie satisfy this
requirement.
21. The next issue to be considered is whether the Plaintiff can be said
to be guilty of laches in not approaching the court earlier particularly
FAO (OS) No. 138 of 1996 Page 18 of 25
when the Defendants have been using the marks since 1978. In
Hindustan Pencils Private Limited v. India Stationery Products Co.
1989 PTC 61 the complainant was the registered proprietor of trade
mark „NATARAJ and the device of „NATARAJ‟ on its pencils. The
said marks have been adopted by the Plaintiff in the year 1961. In the
middle of 1985 the Plaintiff got to know that the Defendants had got
registered a copy right in respect of a label similar to that of the
Plaintiff in respect of pins. The copy right in respect of pins was
under the name „NATARAJ‟ using also the device of the dancing
Nataraj. The Court also considered the defence raised by the
Defendant in that case that the Plaintiff had acquiesced in the use by
the Defendant of the impugned mark. The Court then referred to the
observation of Court in Whitman v. Disney Productions 263 F2d 229
and held that “delay by itself is not a sufficient defence to an action of
interim injunction but inordinate delay would amount to laches.” It
was further observed as under by the learned Single Judge in paras 28
and 29 of the said judgment:
“28. If an action is taken by the registered owner and
no interim injunction is granted, the effect is that
goods bearing the infringing mark or spurious goods
would continue to be sold in the market. After a
FAO (OS) No. 138 of 1996 Page 19 of 25
number of years when the case is finally disposed of,
after trial, and the plaintiff succeeds and gets a
permanent injunction then, possibly, the plaintiff
may also be compensated by his being awarded
damages or an account of profits, that sense of the
non-grant of the interim injunction would not
ultimately, prejudice the plaintiff for he may be
compensated with payment of money but during this
period when the defendant is allowed to continue to
infringe the intellectual property it is the consumer
or the purchaser who alone suffers and who
ultimately cannot be compensated. Therefore, in
order to curb the menace of manufacture, production
and sale of spurious goods and the blatant violation
of intellectual property it will be proper for the court
to take into consideration the interest of the general
public. In this regard reference may usefully be
made to the following observations of McCARTHY
at page 346, para 30.21 which deals with the
protection of third parties;
“Some courts also consider the necessity of
protecting third parties trade mark infringement
cases, “third parties” means the buying public. If the
equities are closely balanced, the right of the public
not to be deceived or confused may turn the scales in
favour of a preliminary injunction.”
FAO (OS) No. 138 of 1996 Page 20 of 25
29. It would appear to be difficult to accept that
relief of temporary injunction should not be granted,
because of the delay on the part of the plaintiff, even
though the court feels, at that point of time, that
ultimately permanent injunction will have to be
granted.”
22. It was further held that acquiescence cannot be inferred merely by
the reason of the fact that the Plaintiff had not taken any action earlier
against the infringement of its rights. Acquiescence had to mean
something more than mere silence on the part of the Plaintiff. The
Court did not accept the contention that the delay and acquiescence in
the said case would defeat the right of the Plaintiff to seek interim
injunction. The Court on comparison of the marks registered in the
name of the Plaintiff and that used by the Defendant came to the
conclusion that prima facie the adoption of the mark „NATARAJ‟ by
the Defendant was clearly fraudulent.” The injunction was accordingly
granted to the Plaintiff.
23. In the instant case, the Plaintiff has explained the sequence of
events preceding the filing of the suit. It first noticed the infringement
FAO (OS) No. 138 of 1996 Page 21 of 25
in 1986 and immediately sent a legal notice. Thereafter when the
defendants applied for registration, the plaintiff immediately filed an
opposition before the statutory authority and prevented registration
being granted in favour of the defendant. This can hardly be termed as
acquiescence by the Plaintiff. Further, the suit was filed in 1989 itself,
simultaneous with the opposition being filed to the grant of
registration in favour of the defendant. Therefore there is no merit in
this contention of the defendants that the Plaintiff either acquiesced in
the defendants‟ use of the infringing mark and device or that there was
delay in the plaintiff seeking protection of its registered marks from
infringement.
24. For the aforementioned reasons this Court is of the view that the
Plaintiff has made out a prima facie case for grant of injunction. The
mere fact that the present appeal was pending for over 12 years does
not make a difference since the Plaintiff has been able to prima facie
establish that the infringement by the Defendants of the Plaintiff‟s
marks and device by marketing the defendants‟ product under the
mark HARA QILLA and the device of QILLA is a continuing one and
has the effect of harming the Plaintiff‟s reputation and eroding its
FAO (OS) No. 138 of 1996 Page 22 of 25
goodwill in the trade. It is clarified that the observations in this order
are prima facie and not intended to influence the opinion to be formed
by the trial court on an appreciation of the evidence led by the parties.
25. Before concluding a reference may be made to an application
being CM No. 842 of 2001 filed by the Plaintiff. In the said
th
application it is pointed out that against the order dated 29 December
1993 passed by the Registrar Trade Marks accepting the opposition
filed by the Plaintiff to the grant of registration in favour of the
Defendant in respect of HARA QILLA the Defendants had filed CM
th
(Main) No. 165 of 1995 in this Court. By an order dated 30 October
1998 the learned Single Judge dismissed the said application/appeal.
A second appeal against the said order was dismissed by the Division
th th
Bench on 19 January 2001 and therefore the order dated 29
December 1993 passed by the Assistant Registrar of Trade Marks had
attained finality. The said application was filed to bring on record the
aforementioned facts.
st
26. The appeal is allowed. The impugned order dated 1 March 1996
FAO (OS) No. 138 of 1996 Page 23 of 25
passed by the learned Single Judge is hereby set aside. The Defendants
are restrained during the pendency of Suit No. 2247 of 1989 from
processing, selling or offering for sale or dealing in rice or any other
cognate or allied goods under the trade mark HARA QILLA or the
device of QILLA or any mark or device deceptively similar to the
Plaintiff‟s aforementioned registered trade marks and device viz.,
device of QILLA, the words GOLDEN QILLA (word per se), LAL
QILLA CHAPP (word per se), LAL QILLA (word and device mark)
and NEEL QILLA in relation to the goods for which they were
registered, i.e, rice. While the Defendants will be restrained forthwith
as directed hereinbefore, they are granted 3 months‟ time to dispose of
the current stock of rice packed in bags using the words HARA
QILLA and device QILLA. In other words, the Defendants will
forthwith stop the words HARA QILLA and device QILLA and will
be permitted to dispose of the existing stocked of rice that has already
been packed as of date within a period of three months from today
subject of course to maintaining proper inventories and accounts
which will be filed in the trial court every three months.
27. The learned single Judge is requested to expedite the trial of the
FAO (OS) No. 138 of 1996 Page 24 of 25
suit and dispose it of within a period of one year from today. The trial
court record will be returned forthwith.
S.MURALIDHAR, J
CHIEF JUSTICE
MAY 29, 2009
dn
FAO (OS) No. 138 of 1996 Page 25 of 25
Date of decision: May 29, 2009.
FAO (O) No. 138 of 1996 & C.M.No. 842 of 2001
M/S. AMAR SINGH CHAWAL WALA ..... Appellant
Through: Mr. Valmiki Mehtra, Senior
Advocate with Mr. Gurvinder Singh,
Advocate.
versus
M/S. SHREE VARDHMAN RICE AND
GENL. MILLS ..... Respondent
Through: Mr. S.K. Bansal, Advocate.
CORAM:
HON'BLE THE CHIEF JUSTICE
HON'BLE DR. JUSTICE S. MURALIDHAR
1. Whether Reporters of local papers may be
allowed to see the judgment? No
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in Digest? Yes
JUDGMENT
S. MURALIDHAR, J.
st
1. This appeal is directed against the impugned order dated 1 March
1996 passed by the learned Single Judge dismissing IA No.6222 of
1989 filed by the Plaintiff/Appellant in Suit No. 2247 of 1989).
FAO (OS) No. 138 of 1996 Page 1 of 25
2. The aforementioned suit was filed by the Plaintiff/Appellant seeking
a permanent injunction to restrain the Defendants/Respondents from
infringing the Plaintiff‟s registered trade marks in the device of
QILLA, the words GOLDEN QILLA (word per se), LAL QILLA
CHAPP (word per se), LAL QILLA (word and device mark) and
NEEL QILLA in relation to the goods for which they were registered,
i.e, rice. A decree of permanent injunction was also sought to restrain
the Defendants/Respondents from processing, selling or offering for
sale or dealing in rice or any other cognate or allied goods under the
trade mark HARA QILLA or the device of QILLA or any mark or
device deceptively similar to the Plaintiff‟s aforementioned registered
trade marks.
3. In this appeal the parties are referred to by their status in the suit.
Accordingly the Appellant is referred to as the Plaintiff and
Respondents 1 and 2 as the Defendants 1 and 2.
4. The case of the Plaintiff is that it is engaged in the selection,
processing and merchandising of rice since 1952. In the year 1954 the
plaintiff adopted GOLDEN QILLA (words per se) and the device of
FAO (OS) No. 138 of 1996 Page 2 of 25
QILLA as its trade mark so as to indicate its connection in the course
of trade with the goods of its selection, process and merchandise and
also as a proprietor thereof. In the year 1961, it adopted LAL QILLA
(words per se) and also the device of LAL QILLA as its trade mark to
indicate its connection in the course of trade with the goods of its
selection, manufacture and sale and also as a proprietor thereof.
Likewise in 1977, it adopted NEELA QILLA (words per se) and the
device of QILLA as its trade mark. According to the Plaintiff it has
used the aforementioned marks continuously and extensively in the
course of its trade from the dates of their respective adoption by it. Its
rice products have come to be identified and recognized by the
purchasing public and the trade as exclusively belonging to it. The
trade marks mentioned denote to the public and the trade that they are
the goods of the Plaintiff.
5. It is asserted that by virtue of their prior adoption, long, continuous
and established user coupled with the vast publicity given to its marks,
the Plaintiff has acquired an exclusive right to the use thereof as a
proprietor.
FAO (OS) No. 138 of 1996 Page 3 of 25
6. In the plaint the Plaintiff has set out the annual sales and publicity
expenses figures from the year 1970-71 till 1986-87. This has shown
a progressive increase.
7. According to the Plaintiff in addition to the common law rights, it
also held a statutory right to the exclusive use of the aforementioned
trade marks by virtue of registration granted under the Trade and
Merchandise Marks Act, 1958 as per the following details:
“Trade Mark Registration No. Goods Date
Device of QILLA 180418 Rice 16-11-1960
GOLDEN QILLA 201760 Rice 16-04-1962
(word per se)
LAL QILLA 202329 Rice 16-01-1962
CHAAP
(word per se)
LAL QILLA 249547 Rice 16-01-1970
(word &
Device Mark)
NEEL QILLA 337140 Rice 16-04-1979.”
8. According to the Plaintiff the Defendant No.1 Shree Wardhman
Rice & General Mills located at Panipat, Haryana is engaged in the
process and merchandise of rice and the Defendant No.2, M/s. Mamraj
FAO (OS) No. 138 of 1996 Page 4 of 25
Chuni Lal is the agent of Defendant No.1. According to the Plaintiff
the Defendants have adopted an identical and/or deceptively similar
mark HARA QILLA and the device of QILLA in respect of rice of
their process and merchandise. It was submitted that the adoption of
HARA QILLA and the device of QILLA by the Defendants is
malafide, dishonest, tainted and solely with a view to infringe the
aforementioned registered trade marks of the Plaintiff and to cause
confusion and deception among the users and the trade and to pass off
the goods and business of the Defendants as and for the goods and
business of the Plaintiff. It was submitted that unwary purchasers are
likely to be misled into considering the mark HARA QILLA and the
device of QILLA as one of the series of the Plaintiff‟s marks of
GOLDEN QILLA, LAL QILLA, NEELA QILLA and device of
QILLA. It is alleged that the Plaintiff was suffering loss in business as
well as in reputation because of the unlawful trade activities of the
Defendants.
9. The Plaintiff came to know in 1986 through an advertisement in the
newspaper „Vyapar Kesri‟ about the Defendants having adopted the
mark of HARA QILLA and the device of QILLA in connection with
FAO (OS) No. 138 of 1996 Page 5 of 25
the rice being sold by them. The Plaintiff immediately served a notice
th
dated 13 March, 1986 cautioning the defendants from using the said
mark and device. However, the Defendants did not raise any claim
against the averments made in the notice. The goods of the Defendants
under the impugned marks disappeared from the market. However the
Plaintiff was surprised to notice an advertisement of the Defendants‟
application under No. 435166 in the Trade Marks Journal No. 958
st
dated 1 May 1989 for registration of the HARA QILLA and device of
QILLA in respect of rice. The Plaintiff immediately filed an
th
opposition before the Registrar of Trade Marks on 8 May 1989. As
on the date of filing the suit the said opposition was pending. The
Plaintiff also learnt that the Defendants have restarted marketing the
rice under the impugned marks with impunity and therefore the suit
was filed.
10. In the aforementioned suit IA No. 622 of 1989 was filed seeking
an interim injunction restraining the Defendants from infringing the
Plaintiff‟s trade mark and not marketing the Defendant‟s goods under
the mark HARA QILLA and the device QILLA.
FAO (OS) No. 138 of 1996 Page 6 of 25
st
11. By the impugned order dated 1 March 1996, the learned Single
Judge rejected the plaintiff‟s prayer for an interim injunction. The
th
learned Single Judge noted that on 13 December 1993 the Assistant
Registrar of Trade Marks had sustained the opposition and rejected the
Defendant‟s application for registration of the trade mark HARA
QILLA. An application seeking review of the said order was also
th
rejected by an order dated 19 September 1994. The learned Single
Judge also referred to documents filed by the Plaintiff. It was noticed
that although neither party had brought on record photographs of the
respective trade marks, the photocopies of the trade marks registration
certificate were available. The learned Single Judge held that the
Defendant‟s device of QILLA was not identical or similar to the
QILLA used by the Plaintiff as its device either with GOLDEN
QILLA or QILLA. It was held that the colour scheme was not the
controversy either by way of imitation or by way of distinction. The
learned Single Judge on comparing the marks used by the Plaintiff as
well as the Defendant concluded as under:
“The device used by the plaintiff along with
GOLDEN QILLA is so materially different from the
device used by the defendant along with Hara Qilla
that there is no likelihood of the customer inclined to
FAO (OS) No. 138 of 1996 Page 7 of 25
purchase Lal Qilla Rice being deceived into
purchasing Hara Qilla rice. There is no visual or
phonetic similarity between the defendant‟s name
and mark- and the plaintiff‟s name and mark- either
of the three. Golden or Golden Qilla cannot be
confused with Hara Qilla. So is the case with Lal
Qilla and Neela Qilla.”
12. The learned Single Judge further held that “it is not suggested, nor
is it borne out from the record that the defendants have tried to present
their device of Qilla in such a manner as look similar or deceptively
similar with any of the device adopted by plaintiff. It is not the case of
the plaintiff that any of the defendants has at any time attempted at it
passing off the defendants goods as those of the plaintiff.” The learned
Single Judge also rejected the plea of the Plaintiff that the continuous
use of trade names GOLDEN QILLA, LAL QILLA, NEELA QILLA
for a number of years prior to the filing of the suit shows that the
Plaintiff had developed a „family of marks‟ on the ground that merely
because a mark belonged to a „family of marks‟ it was not exempt
from the standard test of trade mark protection.
13. On behalf of the Plaintiff it was contended that the Defendants had
FAO (OS) No. 138 of 1996 Page 8 of 25
actually failed to indicate how they came across the words „HARA
QILLA‟ and the device of QILLA if indeed Defendant No.1 was in the
th
trade of marketing rice since 7 December 1978. It is pointed out that
Defendant No.1 made an application for registration of its mark and
device only in 1989. It was therefore submitted that the use of the
mark HARA QILLA and the device QILLA cannot be said to be an
honest. It is further submitted that the use cannot also be said to be
concurrent since no bills or invoices had been produced by the
Defendants to show that they were using the marks since 1978. It was
submitted that the mere fact that this appeal had been pending for over
12 years should not be a reason ground to reject the prayer of the
Plaintiff for an interim injunction since the impugned order was
constituting a precedent for others to infringe the registered marks and
device of the Plaintiff with impunity. It was contended that the
continuous infringement of the registered marks of the Plaintiff by the
Defendants was justification for persisting with the plea of interim
injunction despite the fact that the present appeal was pending for a
long time. In any event the main suit was also pending and was
unlikely to conclude at an early date. Reliance was placed on the
observations of this Court in Hindustan Pencils Private Limited v.
FAO (OS) No. 138 of 1996 Page 9 of 25
Universal Trading Company 2000 PTC 561 (DB) . Reliance was
placed on a number of decisions which will be discussed hereafter.
14. On behalf of the Defendants it was submitted that the trade mark
HARA QILLA was not identical or deceptively similar to the trade
mark sought to be enforced by the Plaintiff. According to the
Defendants the words HARA QILLA and LAL QILLA conveyed
different and distinct identities. The word QILLA was per se of no
significance. The marks of the Plaintiff and that of the Defendant
No.1 were not deceptively similar so as to cause confusion in the mind
of the buyer. Moreover, the Plaintiff had not approached the Court
despite the defendant No. 1 using the mark since 1978 and therefore
had acquiesced in the use by the defendants of the mark and device of
HARA QILLA and QILLA. It was submitted that the mere fact that
the Registrar of Trade Marks had accepted the opposition of the
Plaintiff to the application made by the Defendants for registration of
their mark HARA QILLA could not determine the question of grant of
interim injunction. The Plaintiff was required to make out a prima
facie case in its favour on the basis of materials brought on record in
the suit. In any event the order of the Assistant Registrar of Trade
FAO (OS) No. 138 of 1996 Page 10 of 25
Marks was challenged in this Court in C.M. (Main) No. 165 of 1995.
It was submitted that a registered trade mark only raises a presumptive
right and it was not necessary that an injunction has to follow.
Reliance was placed upon the decisions in N.R. Dongre v. Whirlpool
Corporation AIR 1995 DELHI 300 , Amritdhara Pharmacy v. Satya
Deo AIR 1963 SC 449, Mahendra & Mahendra Paper Mills Ltd. v.
Mahindra & Mahindra Ltd. JT 2001 (9) SC 525, Corn Products
Refining Company v. Shangrila Food Products Ltd. PTC (Suppl) (1)
13 (SC), F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners &
Co. Pvt. Ltd. PTC (Suppl) (1) 88 (SC) . The Defendants relied on the
decisions in Power Control Appliances v. Sumeet Machines Pvt. Ltd
1995 PTC 165 , Bali Trade Mark (No.2) Fleet Street Reporter [1978]
193 to contend that honest and concurrent user by the defendants of
the registered marks of the Plaintiff would justify the refusal of
injunction to the Plaintiff. Learned counsel for the Defendants relied
upon the observations in Power Control Appliances to contend that
the delay and laches in the Plaintiff approaching the Court for relief
could be fatal to its case for grant of injunction. It was contended that
the appropriate order for this Court was to expedite the trial of the suit
itself.
FAO (OS) No. 138 of 1996 Page 11 of 25
15. The submissions of the parties have been considered. It is not in
dispute that the Plaintiff has in its favour registration of the four marks
and devices as noticed hereinbefore. The suit filed by the Plaintiff is
essentially one for infringement in respect of the Plaintiff‟s trade mark
on the ground that the use by the Defendants of the mark and device
HARA QILLA and QILLA respectively would cause confusion and
deception among the users and the trade in general. The distinction
between a suit based on infringement and that based on passing off
was explained by the Supreme Court in Kaviraj Pandit Durga Dutt
Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC
980 . It was explained that “while action for passing off is a common
law remedy being in substance an action for deceit, that is, a passing
off by a person of his own goods as those of another, that is not the
gist of an action for infringement. The action for infringement is a
statutory remedy conferred on the registered proprietor of a registered
trade mark for the vindication of the „exclusive right to the use of the
trade mark in relation to those goods.‟ The use by the Defendant of
the trade mark of the Plaintiff is not essential in an action for passing
off, but is the sine qua non in the case of an action for infringement.”
It was further noticed that “where the evidence in respect of passing
FAO (OS) No. 138 of 1996 Page 12 of 25
off consists merely of the colourable use of a registered trade mark,
the essential features of both the actions might coincide, in an action
for infringement, the Plaintiff must, no doubt, make out that the
defendant’s mark is so close either visually, phonetically or
otherwise and the Court should reach the conclusion that there is an
imitation” in which event it would be established that the Plaintiff‟s
rights are violated. The Supreme Court went on to further explain that
“ if the essential features of a trade mark of the Plaintiff have been
adopted by the defendant, the fact that the get up, packing and
other writing or marks on the goods or on the packets in which he
offers his goods for sales show marked differences, or indicate
clearly a trade origin different from that of the registered
proprietor of the mark would be immaterial ; whereas in the case of
passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
Plaintiff.” (emphasis supplied)
16. In Amritdhara Pharmacy v. Satya Deo the question of phonetic
similarity between Amritdhara and Lakshmandhara was considered. It
was said that “an unwary purchaser of average intelligence and
FAO (OS) No. 138 of 1996 Page 13 of 25
imperfect recollection would not split the name into its component
parts and consider the etymological meaning thereof or even consider
the meaning of the composite words as „current of nectar‟ or „current
of Lakshman‟. Where the trade relates to goods largely sold to
illiterate or badly educated persons, it is no answer to say that a person
educated in the Hindi language would go by the etymological or
ideological meaning and see the difference between „current of nectar‟
and „current of Lakshman‟. It was emphasized that the whole word
had to be considered. It was held that “the overall similarity between
the two names in respect of the same description of the goods would
likely to cause confusion within the meaning of Section 10(1) of the
Trade Marks Act, 1940.”
17. In the instant case as far as the registered marks in favour of the
Plaintiff are concerned, applying the test laid down in Kaviraj Pandit
it is seen that the essential feature of the mark is the word „QILLA‟.
Whether the word is spelt as QILLA or KILLA, or even written in a
different style or colour combination. To the customer who seeks to
purchase the QILLA brand rice both names would sound phonetically
similar. The customer is likely to ask the retailer: “Can I have the
FAO (OS) No. 138 of 1996 Page 14 of 25
QILLA brand rice?” In the considered view of this Court, it is this
essential feature of the Plaintiff‟s mark, i.e the word QILLA, which
has been adopted by the Defendant No.1. That the defendants have
also used a pictorial representation of the device in the form of a fort
also indicates that the Defendants too intended the same meaning to be
assigned to the word, which is an Urdu one meaning “fort”.
Therefore, though the device QILLA is depicted in a slightly different
way by the defendant, it is deceptively similar to the device used by
the Plaintiff. Further the use is in respect of the same commodity, rice.
Therefore there is every possibility f there being a confusion created in
the mind of the purchaser of rice that the product being sold by the
Defendant is in fact a product that has emanated from or has been
manufactured by the Plaintiff.
18. It is not possible to agree with the reasoning of the learned Single
Judge that the word QILLA is not associated with rice and therefore
no ordinary purchaser of rice would associate the Defendant‟s mark as
that of the Plaintiff‟s. It is plain from the pleadings that the Plaintiff
has been using the words QILLA consistently in connection with the
rice being sold by them with only the first word indicating the colour
FAO (OS) No. 138 of 1996 Page 15 of 25
viz., GOLDEN, LAL or NEELA. It must be held that the Plaintiff has
been able to prima facie show that it has developed a „family of
marks‟ and that by merely changing the first word from GOLDEN,
LAL or NEELA to the word HARA there is every possibility of
confusion being caused both in trade and in the mind of any person
desiring to purchase rice. Likewise the use of the picture or depiction
of a fort in the background on the label/packing of the rice is also
likely to cause confusion in the mind of the purchaser and in the trade
that the product being sold by the Defendants are in fact those
manufactured by the Plaintiff.
19. This Court proposes to next consider the plea of the Plaintiff that
use by the Defendants of the said marks was not in fact an honest one
since the Defendant did not indicate how it came across the
word/device associated with its product rice. It must be remembered
that the Plaintiff has been in trade since 1962 onwards and it has been
marketing its rice by using the words and device of QILLA. These
words, as rightly pointed out by the learned Single Judge, do not
automatically get associated with a consumable food product like rice.
For the Defendants to have chance upon the same word i.e. QILLA
FAO (OS) No. 138 of 1996 Page 16 of 25
and the same device in terms of depiction of a fort would have to be
supported by its showing how it got inspired to use those words. It is
not possible therefore to accept the plea of the Defendants that in the
instant case, there was an honest concurrent use. The legal position
was succinctly explained by the House of Lords in Alex Pirie & Sons’
Application (1933) 50 R.P.C. 147 where it was held as under:
“Secondly, the appellants say, and this is their main
line of attack upon the conclusion of the Court of
Appeal, that though the respondents were honest in
their user in the sense that they never intended to
cause confusion or to pass off their goods as the
goods of the appellants, yet inasmuch as they knew
of the appellants‟ mark when they adopted their own
and that the marks have been used on the same
goods in the same market, the user of the
respondents‟ mark cannot be treated as honest within
the meaning of the section and that in any case by
refusal of registration there would not in these
circumstances be the hardship to the respondents
which the section is intended to prevent.
“My lords, it has never been suggested throughout
this case that the conduct of the respondents has in
the slightest respect been open to criticism, and I
should be sorry to place upon this statute a
FAO (OS) No. 138 of 1996 Page 17 of 25
construction which would brand as statutory
dishonesty conduct justified in the eyes of
honourable men. There is in fact no ground for
doing so. Knowledge of the registration of the
opponent‟s mark may be an important factor where
the honesty of the user of the mark sought to be
registered as impugned, but when once the honesty
of the user has been established the fact of
knowledge loses much of its significance, though it
may be a matter not to be wholly overlooked in
balancing the considerations for and against
registration.”
20. In the considered view of this Court, the defendants have not been
able to demonstrate prima facie honest use of the mark. They have
also not been able to show concurrent user of the mark or device. The
Plaintiff is right in pointing out that no invoices or bills since 1978
have been placed on record by the defendants to substantiate this plea.
Whatever has been placed on record does not prima facie satisfy this
requirement.
21. The next issue to be considered is whether the Plaintiff can be said
to be guilty of laches in not approaching the court earlier particularly
FAO (OS) No. 138 of 1996 Page 18 of 25
when the Defendants have been using the marks since 1978. In
Hindustan Pencils Private Limited v. India Stationery Products Co.
1989 PTC 61 the complainant was the registered proprietor of trade
mark „NATARAJ and the device of „NATARAJ‟ on its pencils. The
said marks have been adopted by the Plaintiff in the year 1961. In the
middle of 1985 the Plaintiff got to know that the Defendants had got
registered a copy right in respect of a label similar to that of the
Plaintiff in respect of pins. The copy right in respect of pins was
under the name „NATARAJ‟ using also the device of the dancing
Nataraj. The Court also considered the defence raised by the
Defendant in that case that the Plaintiff had acquiesced in the use by
the Defendant of the impugned mark. The Court then referred to the
observation of Court in Whitman v. Disney Productions 263 F2d 229
and held that “delay by itself is not a sufficient defence to an action of
interim injunction but inordinate delay would amount to laches.” It
was further observed as under by the learned Single Judge in paras 28
and 29 of the said judgment:
“28. If an action is taken by the registered owner and
no interim injunction is granted, the effect is that
goods bearing the infringing mark or spurious goods
would continue to be sold in the market. After a
FAO (OS) No. 138 of 1996 Page 19 of 25
number of years when the case is finally disposed of,
after trial, and the plaintiff succeeds and gets a
permanent injunction then, possibly, the plaintiff
may also be compensated by his being awarded
damages or an account of profits, that sense of the
non-grant of the interim injunction would not
ultimately, prejudice the plaintiff for he may be
compensated with payment of money but during this
period when the defendant is allowed to continue to
infringe the intellectual property it is the consumer
or the purchaser who alone suffers and who
ultimately cannot be compensated. Therefore, in
order to curb the menace of manufacture, production
and sale of spurious goods and the blatant violation
of intellectual property it will be proper for the court
to take into consideration the interest of the general
public. In this regard reference may usefully be
made to the following observations of McCARTHY
at page 346, para 30.21 which deals with the
protection of third parties;
“Some courts also consider the necessity of
protecting third parties trade mark infringement
cases, “third parties” means the buying public. If the
equities are closely balanced, the right of the public
not to be deceived or confused may turn the scales in
favour of a preliminary injunction.”
FAO (OS) No. 138 of 1996 Page 20 of 25
29. It would appear to be difficult to accept that
relief of temporary injunction should not be granted,
because of the delay on the part of the plaintiff, even
though the court feels, at that point of time, that
ultimately permanent injunction will have to be
granted.”
22. It was further held that acquiescence cannot be inferred merely by
the reason of the fact that the Plaintiff had not taken any action earlier
against the infringement of its rights. Acquiescence had to mean
something more than mere silence on the part of the Plaintiff. The
Court did not accept the contention that the delay and acquiescence in
the said case would defeat the right of the Plaintiff to seek interim
injunction. The Court on comparison of the marks registered in the
name of the Plaintiff and that used by the Defendant came to the
conclusion that prima facie the adoption of the mark „NATARAJ‟ by
the Defendant was clearly fraudulent.” The injunction was accordingly
granted to the Plaintiff.
23. In the instant case, the Plaintiff has explained the sequence of
events preceding the filing of the suit. It first noticed the infringement
FAO (OS) No. 138 of 1996 Page 21 of 25
in 1986 and immediately sent a legal notice. Thereafter when the
defendants applied for registration, the plaintiff immediately filed an
opposition before the statutory authority and prevented registration
being granted in favour of the defendant. This can hardly be termed as
acquiescence by the Plaintiff. Further, the suit was filed in 1989 itself,
simultaneous with the opposition being filed to the grant of
registration in favour of the defendant. Therefore there is no merit in
this contention of the defendants that the Plaintiff either acquiesced in
the defendants‟ use of the infringing mark and device or that there was
delay in the plaintiff seeking protection of its registered marks from
infringement.
24. For the aforementioned reasons this Court is of the view that the
Plaintiff has made out a prima facie case for grant of injunction. The
mere fact that the present appeal was pending for over 12 years does
not make a difference since the Plaintiff has been able to prima facie
establish that the infringement by the Defendants of the Plaintiff‟s
marks and device by marketing the defendants‟ product under the
mark HARA QILLA and the device of QILLA is a continuing one and
has the effect of harming the Plaintiff‟s reputation and eroding its
FAO (OS) No. 138 of 1996 Page 22 of 25
goodwill in the trade. It is clarified that the observations in this order
are prima facie and not intended to influence the opinion to be formed
by the trial court on an appreciation of the evidence led by the parties.
25. Before concluding a reference may be made to an application
being CM No. 842 of 2001 filed by the Plaintiff. In the said
th
application it is pointed out that against the order dated 29 December
1993 passed by the Registrar Trade Marks accepting the opposition
filed by the Plaintiff to the grant of registration in favour of the
Defendant in respect of HARA QILLA the Defendants had filed CM
th
(Main) No. 165 of 1995 in this Court. By an order dated 30 October
1998 the learned Single Judge dismissed the said application/appeal.
A second appeal against the said order was dismissed by the Division
th th
Bench on 19 January 2001 and therefore the order dated 29
December 1993 passed by the Assistant Registrar of Trade Marks had
attained finality. The said application was filed to bring on record the
aforementioned facts.
st
26. The appeal is allowed. The impugned order dated 1 March 1996
FAO (OS) No. 138 of 1996 Page 23 of 25
passed by the learned Single Judge is hereby set aside. The Defendants
are restrained during the pendency of Suit No. 2247 of 1989 from
processing, selling or offering for sale or dealing in rice or any other
cognate or allied goods under the trade mark HARA QILLA or the
device of QILLA or any mark or device deceptively similar to the
Plaintiff‟s aforementioned registered trade marks and device viz.,
device of QILLA, the words GOLDEN QILLA (word per se), LAL
QILLA CHAPP (word per se), LAL QILLA (word and device mark)
and NEEL QILLA in relation to the goods for which they were
registered, i.e, rice. While the Defendants will be restrained forthwith
as directed hereinbefore, they are granted 3 months‟ time to dispose of
the current stock of rice packed in bags using the words HARA
QILLA and device QILLA. In other words, the Defendants will
forthwith stop the words HARA QILLA and device QILLA and will
be permitted to dispose of the existing stocked of rice that has already
been packed as of date within a period of three months from today
subject of course to maintaining proper inventories and accounts
which will be filed in the trial court every three months.
27. The learned single Judge is requested to expedite the trial of the
FAO (OS) No. 138 of 1996 Page 24 of 25
suit and dispose it of within a period of one year from today. The trial
court record will be returned forthwith.
S.MURALIDHAR, J
CHIEF JUSTICE
MAY 29, 2009
dn
FAO (OS) No. 138 of 1996 Page 25 of 25