TaxTMI 
TaxTMI 
TaxTMI 
2016 (3) TMI 834
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....nd sweeten with sugar. As per Qarshi, it has been selling the beverage since the year 1980 and has its presence in India through sale of its product in the physical market as also on the net, evidenced by invoices filed by Qarshi. Relying upon broadcast of commercial serials sponsored by Qarshi to popularize its trademark and relying upon awesome sales; informing that Qarshi's application for registration of its trademark 'JAM-E-SHIRIN' was pending with further information that Hamdard had a registration in its favour of the trademark 'HAMDARD JAM-E-SHIRIN', the suit was instituted. 2. Along with the suit was filed IA No.1248/2016 invoking Order 39 Rule 1 and 2 of the Code of Civil Procedure, 1908. The prayer made therein was to restrain Hamdard from selling the herbal sweeten syrup, using the trademark 'HAMDARD JAM-E-SHIRIN'. 3. Placed before a learned Single Judge of this Court, issuing summons in the suit, upon the condition that being a foreign entity and having no tangible assets in India, Qarshi should furnish security of the value of Rs. 10,00,000/- (Rupees Ten Lakhs only), summons were issued to Hamdard but ex-parte ad-interim injunction was de....
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....tion, the trademark authority in Pakistan had clearly indicated that the registration was granted for the word mark 'QARSHI KA JAM-E-SHIRIN' with no right to the exclusive use of the words 'JAM-E-SHIRIN' as also with no exclusive right to the word SHIRIN and with further condition that the word mark 'QARSHI KA JAM-E-SHIRIN', for which registration was granted, would be used along with word QARSHI KA and also with the letter E written between JAM and SHIRIN, which fact was not disclosed in the plaint, we had put it to learned senior counsel for Qarshi whether the appeal could be disposed of with a simple observation that the meaning ascribed to the words JAM and SHIRIN by the learned Single Judge were ex-facie incorrect and hence the inference drawn qua the suggestive character of the words (with reference to the meaning ascribed by the learned Single Judge but leaving it open to debate whether the words would still be suggestive of the quality of the product sold with reference to the Urdu meaning JAM = goblet and SHIRIN = sweet). The reason being an argument arising on an alleged suppression of a relevant fact i.e. simple disclosure that the trademark '....
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.... which the word mark 'SHARBAT ROOH AFZA' was opined to be (though public juris) not suggestive, because the common man was not well versed in Urdu. Learned senior counsel relied upon the decision of a Division Bench reported as 2008 (37) PTC 468 Indian Hotels Co. Ltd. & Anr. Vs. Jiva Institute of Vedic Science & Culture to urge that as in the said case, where the defendant had itself written to the Registrar of Trademark while seeking registration of its trademark having the word 'JIVA' as a part of the mark that the word 'JIVA' was not descriptive, the defendant could not turn back and say to the plaintiff that it cannot sue on a protection available to its trademark using the word 'JIVA' because the word was suggestive. We note that the word 'JIVA' would in Hindi mean a living being or life. Learned senior counsel referred to communication between Hamdard and the Registrar of Trademarks concerning 'JAM-E-SHIRIN' being descriptive and the possible stand of Hamdard that it was not descriptive. Learned senior counsel referred to the decision reported as 1955 SC 558 Registrar of Trademarks Vs. Ashok Chandra Rakhit to urge that disclaime....
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....n Pakistan to Qarshi that its trademark 'QARSHI KA JAM-E-SHIRIN' was registered with no right to the exclusive use of the words 'JAM-E-SHIRIN'; (ii) No exclusive right to the use of the words 'E' and 'SHIRIN'; (iii) No exclusive right in the word 'SHIRIN' separately and apart from the mark as a whole; and (iv) The condition that the mark shall be used along with 'QARSHI KA'. The argument would therefore be that the implication of the combined effect of the four facets would be that Qarshi would have a reputation for its product intrinsically linked to the trademark 'QARSHI KA JAM-E-SHIRIN'; meaning thereby the four words and the letter E would be the name of the word mark akin to a phrasal noun. Learned counsel urged that merely because the learned Single Judge misunderstood the meaning of the word JAM and SHIRIN to mean drink and cooling effect, and as a matter of fact JAM meant goblet and not drink and SHIRIN meant sweet and not cooling effect, it would not mean that there is intrinsic evidence (on the reasoning that if a learned Judge misunderstood the meaning) that the words JAM and SHIRIN, though common words in Urdu lang....