TaxTMI 
TaxTMI 
2014 (1) TMI 1217
X X X X Extracts X X X X
X X X X Extracts X X X X
....s 27(i) and (ii) of the plaint. The Plaintiff then gave up the other reliefs against Defendant No.2. Consequently, by an order passed on that date, the suit was decreed against Defendant No.2. As a result, Defendant No.1 alone is contesting the present case. 3. The Plaintiff is stated to be the 4th largest fast-moving consumer goods company in India engaged in the business of manufacturing pharmaceutical, toiletries, Ayurvedic medicinal preparations, digestive tablets, fruit juices etc. since 1884. The Plaintiff's house mark 'DABUR' is claimed to be a trusted household name. It is stated that the Plaintiff spends more than Rs. 343 crore per annum on publicity and advertisements out of an annual turnover of approximately Rs. 2,800 crore. The Plaintiff's products are stated to be widely marketed both in India and abroad and are known for their high quality and hygienic standards that meet the changing needs and tastes of consumers. 4. It is stated that one of the premium brands of the Plaintiff is packaged juice which was launched in 1994 under the trademark 'REAL'. It is submitted that the juices are prepared from natural fruit pulp/juice concentrates mixed with water packed in "F....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e identical, the use by Defendant No.1 of the mark 'REAL' is bound to cause deception and confusion in the market and also constitute infringement of the Plaintiff's trademark. It is stated that there is continuous deception on account of both the products being sold under the identical trademark 'REAL'. Both the products are beverages, i.e., fruit juice and flavoured fruit drinks; both goods are sold from the same shops and trading channels and are purchased and consumed by all strata of society. It is stated that there will be confusion as to the source and origin of the goods and that the adoption by Defendant No.1 of the impugned trademark constitutes misrepresentation and misappropriation of the Plaintiff's registered trademark as well as its goodwill and reputation amounting to passing off. 8. The Plaintiff, upon search with the Trademark Registry, found that Defendant No.1 has secured registration in favour of the trademark 'REAL MANIK' in Class 32 under registration No. 2053267 dated 15th November 2010, on fact which had escaped the Plaintiff's attention. It is stated that Defendant No.1 has falsely claimed user since 17th September 1974 while applying for registration of ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....d is not carrying on business at Delhi. Therefore, no action for passing off can lie against Defendant No.1 since its products are not available in Delhi. 11. On 1st June 2012, an interim order was passed by the Court, restraining both Defendants 1 and 2 from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in beverages under the impugned trademark 'REAL' or any other mark that is identical with and/or deceptively similar with the trade mark 'REAL' of the Plaintiff, amounting to infringement of the Plaintiff's trademark as well as passing off. Thereafter Defendant No. 1 filed IA No. 11656 of 2012 under Order XXXIX Rule 4 CPC seeking vacation of the aforementioned stay order. By the order dated 26th July 2012, the Defendant was given the liberty to use its registered trademark 'REAL MANIK'. Subject to the said modification, the interim order dated 1st June 2012 was maintained. 12. Aggrieved by the orders dated 1st June 2012 and 26th July 2012, the Defendant filed an appeal, being FAO (OS) No. 419 of 2012. The said appeal was disposed of by the Division Bench ('DB') by order dated 3rd September 2012, the relevant portion of which reads as unde....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ch is a prominent feature of the label mark 'REAL', which is a composite one combining several elements. There is no limitation on the use of the word 'REAL' in the certificate of registration issued by the Trade Marks Registry in favour of the Plaintiff. The present suit for infringement is therefore maintainable as such under Section 134(1) of the TM Act. Therefore, the challenge of Defendant No.1 to the jurisdiction of the Court to entertain the suit as one for infringement is hereby negatived. 15. As regards the prayer for passing off, the Plaintiff would have to show that the products of Defendant No. 1 are, in fact, available in Delhi. The pleadings in the plaint in this regard are vague at best. In the plaint, the Plaintiff states that the infringing goods of Defendant No.1 with the mark 'REAL' were found at "the Delhi-Haryana border". It is not clear whether the goods were found on the Delhi side of the border. It is only in the replication that the Plaintiff has tried to explain that Defendant No.1's products were found in the Delhi side of the border. The plea that Section 20 (b) CPC enables the Court to grant leave to the Plaintiff to sue Defendant No.1 overlooks the f....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ff from suing Defendant No.1 for infringement, since both are the registered proprietors of identical marks. In the first place, it must be noted that under Section 28 read with Section 31 of the TM Act, the protection to a mark is conditional upon its validity. Further, Section 124 applies to a situation where the Plaintiff may not have challenged the validity of the registration of the rival mark at the time of filing the suit, but does so subsequently. In the instant case, the Plaintiff has applied for rectification of the mark of Defendant No.1 and the proceedings arising therefrom is pending before the Intellectual Property Appellate Board (ÍPAB'). Therefore, it is possible for the Plaintiff to contend that the question whether Section 28 (3) of the TM Act precludes the Plaintiff from seeking to restrain Defendant No.1 from infringing its mark will have to await the decision of the IPAB on the Plaintiff's challenge to the validity of the registration in favour of Defendant No.1. That stage is yet to be reached. Therefore, the fact that Defendant No.1 is a registered proprietor of an identical mark in the same class cannot preclude the Plaintiff from seeking to restrain ....