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of <h1>Appeal partly allowed: Infringement injunction set aside, passing off restraint continues. Trial needed for evidence evaluation.</h1> The court partly allowed the appeal, setting aside the order of ad-interim injunction concerning infringement but continuing the restraint on passing off ... Restraining defendant from infringing the trademark “GOLD WINNER” - It is the claim of the plaintiff that the trademark “GOLD WINNER” was originally coined and adopted by the plaintiff in the year 1999 in respect of different varieties of Dhall and Flour preparations - It is also the claim of the respondent/plaintiff that in order to safeguard the rights acquired over the said trademark, they applied and obtained registration for the mark “GOLD WINNER (Label)” under Application No.1232740 in Class-30. The prayer of the respondent/plaintiff in O.A.No.224 of 2017 is for an order of ad-interim injunction restraining the appellant/defendant from in any manner infringing the registered trademark and passing off its products as that of the respondent/plaintiff's trademark “GOLD WINNER” Held that:- The documents made available before this Court would prima facie indicate that the respondent/plaintiff is having Certificate of Registration in Class-30 in respect of dhall varieties in Reg.No.1232740 dated 05.09.2003 and whereas the appellant/defendant is having trademark registration Nos.1399085, 1399087 and 1399088 dated 16.11.2005 in Class-30 for the mark “GOLD WINNER SREE GOLD”. This Court is of the considered view that the respondent/plaintiff is not entitled for an order of ad-interim injunction in respect of infringement for the reason that the registration of the appellant/defendant for the mark “GOLD WINNER SREE GOLD” dated 16.11.2005 is also in respect of Class-30. Both the appellant/defendant and the respondent/plaintiff is having registration in respect of dhall varieties etc., in Class-30 and that the registration of the respondent/plaintiffis dated 05.09.2003. A contention was also put forward that the mark of the appellant/defendant is not a “well-known trademark” as per the definition under Section 2(zg) of the Trade Marks Act, 1999 and the learned Judge in paragraph 33 of the impugned order observed that it was open to the appellant/defendant to establish his claim in that regard during in trial. This Court is also of the considered that it also requires appreciation of evidence, which can be let in during the course of trial and hence, not inclined to give any finding as to whether the trademark of the appellant/defendant has attained such reputation and status - the appellant/defendant has stopped using the said wrapper for the reasons best known to him and started packing dhall varieties in the package/wrapper titled as “GOLD WINNER- Range of dals”. The explanation offered is that they are having registration of the artistic work “GOLD WINNER SREE Gold” and those Registration Certificates are in respect of Orid Dhall, Moong Dhall and Toor Dhall bearing Nos.A-78000/2006, 78004/2006 and 78063/2007 dated 29.12.2006 and 09.01.2007 respectively and whereas the respondent/plaintiff's trademark registration certificates are dated 05.09.2003. It is a settled position of law that when the word is only descriptive of the character of the goods, no protection can be claimed for use of such word, but if the word is known for its distinctiveness secondary meaning, such word is entitled to get protection. Appeal allowed in part. Issues Involved:1. Infringement of Trademark2. Passing Off3. Prior Use and Registration4. Anti-Dissection Principle5. Likelihood of Confusion6. Disclaimer in Trademark Registration7. Rights of Registered Proprietors8. Interim InjunctionDetailed Analysis:1. Infringement of Trademark:The respondent/plaintiff filed a suit seeking a permanent injunction to restrain the appellant/defendant from infringing the trademark 'GOLD WINNER' and passing off its products as that of the plaintiff's. The plaintiff claimed that the trademark 'GOLD WINNER' was coined and adopted in 1999 and has been continuously used since then. The plaintiff obtained registration for the mark 'GOLD WINNER (Label)' in Class-30. The appellant/defendant, however, contended that it is the registered proprietor of the mark 'GOLD WINNER' in Class-29 for sunflower oil and 'GOLD WINNER SREE GOLD' in Class-30 for dhall varieties since 2005.2. Passing Off:The plaintiff alleged that the defendant's use of the trademark 'GOLD WINNER' for dhall varieties creates confusion and deception, infringing the plaintiff's prior adopted and registered trademark. The defendant argued that it has been using the mark 'GOLD WINNER' since 1993 for oil and since 2005 for dhall varieties, and that the plaintiff's registration does not grant exclusive rights over the word 'GOLD WINNER' alone.3. Prior Use and Registration:The plaintiff claimed prior use of the trademark 'GOLD WINNER' for dhall since 1999, while the defendant asserted prior use of the mark for oil since 1993 and for dhall since 2005. The court noted that both parties have registrations in Class-30, with the plaintiff's registration dated 05.09.2003 and the defendant's dated 16.11.2005.4. Anti-Dissection Principle:The defendant argued that the plaintiff's label mark should be viewed as a whole and not dissected into parts, asserting that the plaintiff's registration is for a label consisting of several parts, including 'GOLD WINNER' and 'Device of Man.' The court found that the plaintiff's registration does not grant exclusive rights over the word 'GOLD WINNER' alone.5. Likelihood of Confusion:The court considered whether the defendant's use of the mark 'GOLD WINNER' for dhall creates a likelihood of confusion among consumers. The court observed that the plaintiff's and defendant's products fall under different classes (Class-30 for dhall and Class-29 for oil) and that the issue of confusion requires evaluation of evidence during the trial.6. Disclaimer in Trademark Registration:The court noted that the plaintiff's registration includes a disclaimer for the 'Device of Man' and descriptive matters but not for the word 'GOLD WINNER.' The court found that the disclaimer does not affect the plaintiff's claim of infringement.7. Rights of Registered Proprietors:The court referred to Section 28(3) of the Trade Marks Act, 1999, which provides that where two or more persons are registered proprietors of identical or nearly resembling trademarks, the exclusive right to use the trademarks is not acquired against each other merely by registration. The court observed that both parties have registrations in Class-30, and the plaintiff cannot claim exclusive rights over the mark 'GOLD WINNER' against the defendant.8. Interim Injunction:The court initially granted an ad-interim injunction restraining the defendant from infringing the trademark 'GOLD WINNER' and passing off its products. The order was later modified to allow the defendant to market its existing stock. The court ultimately extended the interim order for one year, restraining the defendant from passing off its products as that of the plaintiff under the trademark 'GOLD WINNER.'Conclusion:The court partly allowed the appeal, setting aside the order of ad-interim injunction concerning infringement but continuing the restraint on passing off for one year. The court emphasized the need for a trial to evaluate the evidence on issues of prior use, likelihood of confusion, and the rights of registered proprietors.
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