MODERN SNACKS PVT LTD vs MODERN FOODS ENTERPRISES PVT LTD

FACTS

  • The case involves two countersuits. The plaintiff, Modern Foods has sued the defendant Modern Snacks to seek an injunction against trademark infringement of their use of the word ‘MODERN’
  • The defendant, Modern Snacks has sued the plaintiff seeking restraint from the plaintiff issuing groundless threats with respect to the defendant's use of the word “MODERN’ in case of namkeens, snacks and allied products.
  • Both parties have given the background of their use of the trademark in question and traced the history that is disputed. Both claim to have a wide reach in their products through advertising and sale on platforms like Amazon, India mart, etc.
  • In addition, the plaintiff has developed a website at www.modernfoods.co.in that offers details on the plaintiff's products. Additionally, the defendant maintains a website named modernnamkeen.com. The website of the defendant, according to the plaintiff, is an imitation of the plaintiff's website.
  • In a notice dated 15.06.2020, the plaintiff demanded that the defendant stop using the word "MODERN" among other things. The defendant declined to abide by the cease-and-desist Notice in response to the Notice, via the Reply dated 27.06.2020, asserting that it is an honest adopter and concurrent user of the trade mark "MODERN."


CONTENTIONS

 

PLAINTIFF

  • The plaintiff claims to be the registered proprietor of the mark ‘MODERN’ and an earlier user of the mark since 1965.
  • The marks of the plaintiff and the defendant are similar in such nature that the two can be confused for the same by an unwary consumer.
  • The defendant is a dishonest user and was aware of the Plaintiff’s name in the business. They have adopted the mark with the sole intention of deceiving the members of trade and consumers, to pass off the Plaintiff’s well known brand.
  • The plaintiff has also launched a website under the domain name modernfoods.co.in, which provides information about the plaintiff’s products. The defendant also has a website http://www.modernnamkeen.com. The plaintiff claims that the defendant’s website is an imitation of the plaintiff’s website.
  • The plaintiff, vide Notice dated 15.06.2020, requested the defendant to inter alia cease-and-desist from using the mark ‘MODERN’. In response to the Notice, vide the Reply dated 27.06.2020, the defendant refused to comply with the cease-and desist Notice, claiming that it is an honest adopter and concurrent user of the trade mark ‘MODERN’.

 

 

DEFENDANT

  • The defendant’s argument is that the natures of the goods by the two parties are not similar in nature and cannot be called cognate and allied. The plaintiff’s products are mainly bread and related confectionary while the defendant’s products are namkeens, sweets, savouries, etc
  • The defendant claims to be an honest and concurrent user of the mark
  • A crucial argument of the defendant is that the Plaintiff was aware of the registered mark of the defendant from 2003/ 2010 and has cited the examination report of the conflicting trademarks under class 30. The plaintiff’s reply to the report that contained the defendant’s mark, was that “not identical or deceptively similar and that there is no likelihood of confusion or deception”. The defendant pleads that the plaintiff is now estopped from the current claim of an injunction due to such inordinate delay.
  • The defendant states that the plaintiff falsely stated that it had been using the mark "MODERN" since 1965 in its Legal Notice dated 15.06.2020. Only on "proposed to be used" grounds, the plaintiff submitted registration requests for the mark "MODERN" under Class 30 on December 31, 1993, and September 2, 1994, respectively, using application numbers 615264 and 638841.
  • The Registrar of Trade Marks subsequently issued an Objection Letter dated 25.10.1999 regarding application no. 615264 of CS(COMM) 299/2020 & 460/2020 Page 13 of 31 the plaintiff, in response to which the plaintiff filed a Form TM-16, amending the use of the mark to read as "since the year 18.08.1994".
  • Based on the rulings in M/s Johnson and Johnson & Anr. v. Christine Hoden India Pvt. Ltd., AIR 1988 Del 249; and Kaviraj Pandit, the defendant's knowledgeable attorney claims that even a passing-off claim cannot be upheld because the labels of the plaintiff and defendant are different and the added details in the same can distinguish one from the other.
  • He further argues that even in connection to breads and bakery goods, the plaintiff does not possess an exclusive right to use the mark "MODERN." In Modern Food Industries (I) Ltd. v. Modern Bakery & Ors., (2007) 34 PTC 504, the same plaintiff was denied an injunction against "Modern Bakery," which was determined to be the prior user of the mark "MODERN." He bases this argument on this decision.

 

ISSUES

  • Whether the defendant’s argument of inordinate delay, defeats the claim of the Plaintiff?
  • Whether an injunction can be granted in the present case considering the factors of prima facie facts, balance of convenience and irreparable harm?

 

 

 

OBSERVATIONS

  • The court found no merit in the claims of the defendant where he stated the dissimilarity of goods. The court stated that the products sold by both parties are of the similar nature and are such that are sold at same shops. It is easy for an everyday consumer to be confused and consider both businesses to be the same as the dissimilarity between the marks is inconsequential. The goods are cogent and allied. The court favored the plaintiff in the regard that they had successfully established by way of documentary evidence as being the proprietor of the mark ‘MODERN’
  • However, there was a substantial delay by the plaintiff in filing the present suit after the knowledge of the mark being used by the defendant. Although the court noted that this cannot be a defense in case of an infringement of trademark, but it will have an impact in determining balance of convenience and nature of injunction

 

DECISION

  • The two marks are identical in nature, the plaintiff is the prior adopter of the mark, and the use of the mark is likely to cause confusion in the public's minds. The only reason the interim injunction requested by the plaintiff is not being granted is because of the plaintiff's delay in approaching this Court and the defendant's registration of its marks.
  • Because of the foregoing, the defendant is prohibited by way of this interim order from using the subject mark "MODERN" (in English, Hindi, or another vernacular language) for any goods other than those that were being sold by the defendant using the subject mark on the date the plaintiff filed the lawsuit.
  • The subject mark may only be used by the defendant on labels that the defendant was using at the time the plaintiff filed the current lawsuit and/or that are registered in the defendant's favour with the subject mark.
  • The defendant must list all of its products and the trademarks it uses for them on an affidavit. This affidavit must be submitted within four weeks of today. During the pendency of the current lawsuit, the defendant shall continue to be prohibited from expanding its line of products while utilizing the contested mark "MODERN" in any manner.
  • The defendant shall submit a statement of the sales turnover of its goods bearing the subject mark "MODERN" on an affidavit every two years.
  • Every two years, the defendant must provide an affidavit with a declaration of the sales volume of the items displaying the "MODERN" subject mark.