LT OVERSEAS NORTH AMERICA INC & ANR. V. KRBL LIMITED

FACTS

• The plaintiffs have filed an application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908, appealed to the court to prohibit the defendants from producing, manufacturing, offering for sale, or advertising, promoting its goods or services, exporting, or facilitating advertising campaigns either directly or indirectly any goods bearing the contested mark/package "ZABREEN ROYAL" which is the same as or misleadingly similar to the plaintiffs' mark/label "ROYAL", whether it be in printed or electronic form, on the internet, websites, or in any other way.

 

ISSUE

• The fundamental question being examined is whether the word "ROYAL" is descriptive or merely suggestive of the good, rice, and whether the plaintiffs can assert any exclusive rights 

 

CONTENTIONS

PLAINTIFF

• It is claimed by the plaintiffs that they are engaged in a variety of commercial endeavor’s, including the processing, marketing, and exportation of rice. The plaintiffs' mark, "ROYAL," was created in 1989 by M/s Aromatic Foodstuff Trading.

 

• In India, the mark has seen considerable and ongoing commercial use, and rice has even been transported outside under the aforementioned mark.

 

• The defendant's argument that the word or mark "ROYAL" is descriptive in nature cannot be accepted, according to the plaintiffs' knowledgeable counsel. According to him, the mark is only suggestive at best. It would be entirely random to use the name "rice" in relation to rice. Also, the marks cited by trademarks registry at the time of application were of different goods and services.

 

 

• It is argued that because the impugned mark is identical to or misleadingly similar to the plaintiffs' mark, employing it would inflict damage that would be irreparable on the plaintiffs.

 

DEFENDANT

• The defendant contends that the plaintiffs conceded that their trade mark "ROYAL" is recognizable from other marks with the word "ROYAL" because it is in a label/logo/device format in the response they made to the Examination Reports at the time of registration of their mark. Therefore, plaintiffs can no longer claim that the defendant's use of the trademark "ZABREEN ROYAL" is confusingly similar to the plaintiffs' trademark "ROYAL."

 

• It is claimed that a number of other parties have been prominently using the trade mark that contains the word "ROYAL," and as a result, the plaintiffs cannot allege any exclusive rights over the word "ROYAL," as it is common to commerce.

 

 

• Also, it is alleged that the defendant is using the phrase "ROYAL" in a flattering and descriptive sense along with the mark "ZABREEN" to characterize the royal quality of the rice with extra-long grains and a royal flavor.

 

• As the plaintiffs do not hold registration in the word "ROYAL," it is claimed that no cause of infringement has been established.

 

THE COURT’S POINT OF VIEW

The court has quoted ‘McCarthy on Trademarks and Unfair Competition’. According to the author, there are three categories of distinctive marks which are as follows:

 

(a) Inherently distinctive

(b) Non-inherently distinctive

(c) Marks with no distinctiveness

 

The author classifies "descriptive marks" as "non-inherently distinctive marks," for which secondary meaning is necessary, and "suggestive marks" as "inherently distinctive marks."

 

 

JUDGEMENT

• The name "ROYAL" is solely used to describe the rice's quality. In addition to the word "ROYAL," the defendant asserts that it also uses the phrases "GOLD," "BIRYANI," and "PREMIUM" to describe its various types of rice.

 

• The defendant is advised to modify the dimensions of word ‘ROYAL’ in the mark of ‘ZABREEN’.

 

• The defendant is clearly using the word ‘ZABREEN’ as its trademark. Hence, the defendant have done no infringement or passing off against the defendant.