26 Aug 2022

DHANI AGGARWAL  v.  MAHESH YADAV & ORS.

                       

FACTS:

 

  1. The current appellant suit was filed by Ms. Dhani Aggarwal against the order dated 31.08.2019 passed by the learned Additional District Judge, Tis Hazari Courts, Delhi. The learned ADJ in his impugned order has held that there is no visual and phonetic similarity between the trade marks ‘RAMU’ and ‘RAMAA’, where former is trademark registered in the name of the appellant (plaintiff in this case) and latter is the trademark registered in the name of the respondent ( defendant in this case).

 

  1. The learned ADJ has held that the defendants in the suit/respondents herein would be entitled to use the trade mark ‘RTC RAMAA’, but respondents have been restrained from using the similar outer trade dress/label/colour combination as is being used by the appellant on its products.

 

  1. The appellant is aggrieved by the decision of ADJ whereby he lift the vacation of the temporary injunction on the respondents from using its mark ‘RAMMA’ and ‘RAMMA MUNAKKA’.

 

Contentions of Appellant

 

  1. The learned counsel for the appellant urges that the two marks that is ‘RAMU’ (of the appellant) and ‘RAMAA’ (of the respondents), are phonetically similar. He submits that the appellant is admittedly the proprietor and the prior user of the mark, having adopted the same honestly and in a bona fide manner in the year 1995. The appellant is also the registered proprietor of the said mark in various forms and for various goods under Class 29.

 

  1. The learned counsel for the appellant further submits that the appellant became aware of the existence of the respondents/defendants in the suit only in the second week of February 2019. The appellant has also filed an application seeking rectification of the said mark and the said proceedings are pending.

 

  1. Placing reliance on the judgment of Delhi High Court in Century Traders v. Roshan Lal Duggar & Co., AIR 1978 Del 250, he submits that the prior user trumps the registration of the trade mark.

 

Contention of Respondent

 

  1. He submits that in the present case, the two marks are different and the same has been observed prima facie by the learned ADJ as well. The packaging of the products is also different and therefore, there is absolutely no likelihood of confusion or deception being caused by the adoption of the mark ‘RAMAA’ or of the packaging by the respondents.

 

  1. He submits that the source of the goods is clearly mentioned and distinguished in the packaging adopted by the respondents.

 

Judgment

 

  1. The honorable Delhi High Court made following analysis and findings in the view of all the contentions made by both appellant and the respondent:

 

  1. It must be held that the words ‘RAMU’ and ‘RAMAA’ are the predominant part of the two label marks; the same closely resemble each other, both structurally as also phonetically. Phonetically the two marks, that is, ‘RAMU’ and ‘RAMAA’ are similar and would cause confusion in the mind of an unwary consumer wanting to purchase goods like dry fruits off-the-shelf.

 

  1. The court considers that while determining whether a trademark is similar/ identical to other mark, the test to be applied is also of ‘trade connection’. In the present case, it cannot be said that the products of the appellant and the respondents are so distinct that they cannot create any confusion in the mind of the common purchasers/consumers. The common purchasers/consumers who are aware of the mark of the appellant can easily be misguided into believing that the appellant has now expanded its business to other dry fruits, which may be considered as a natural trade progression for the plaintiff.

 

  1. The court find that it is not much of a significance that the appellant failed to file an immediate opposition against the respondent’s trademark ‘RAMAA’ as the suit has been filed by the appellant/plaintiff in the suit immediately on coming to know of the use of the mark by the respondents/defendants in the suit.

 

  1. The advertisement of a mark of an opponent can escape one’s attention and therefore, such mark can proceed to registration. However, on coming to know of the use of the mark, if the proprietor has taken immediate action, it cannot be said that the proprietor has consented the use of such deceptively-similar mark by their opponent.

 

  1. In Laxmikant Patel (supra), it has been held that where a defendant has imitated or adopted the plaintiff’s distinctive trade mark or business name, the order may be of an absolute injunction that he would not use or carry out business under that name.

 

  1. In view of the above, the impugned order is set aside. The respondents are restrained by way of an ad-interim injunction from using, selling, soliciting, exporting, displaying, advertising or marketing their product under the mark ‘RAMAA’, ‘RAMAA MUNAKKA’ label or any other mark, which is deceptively-similar to the appellant’s trade mark ‘RAMU’, during the pendency of the suit.