DELHI HIGH COURT PASSES ORDER OF INJUNCTION AGAINST THE DEFENDANT’S USE OF DECEPTIVELY SIMILAR TRADEMARKED GOODS
In a recent case of Khandelwal Edible Oils Limited vs Landsmill Agro Private Limited, CS(COMM) 568/2021, I.A. 14686/2021, I.A. 16119/2021, Justice C. Hari Shankar of the Hon’ble Delhi High Court passed a Judgment dated 22-12-2023 and observed that the Defendant has adapted and sold products similar to that of the Plaintiff and further, used wordings, print, colour scheme, etc on the mark / label of the products similar to that of the Plaintiff’s and as such, the said act amounted to trademark and copyright infringement.
i) The Trademark, ‘CHAKRA’ (Plaintiff’s Trademark), which was originally adopted by B.L. Agro Oils Ltd on 01-04-1997, was assigned to the Plaintiff, Khandelwal Edible Oils Limited on 02-12-2008. The Plaintiff obtained registration of the said Mark as a Work Mark for edible oils for sale in the States of Uttar Pradesh, Uttaranchal and Uttarakhand,e.f. 28-06-2013.
ii) The Plaintiff claimed that B.L. Agro Oils Ltd and later, the Plaintiff-Assignee have been using the said Trademark since 1997 in respect of various edible oil products inter alia, mustard oil, Kohlu mustard oil, agmark mustard oil, soya refined oil, refined oil, vegetable refined oil etc. The Plaintiff also had copyright registration for packing and selling such edible oils.
iii) The Plaintiff claimed the right to exclusivity in respect of the said Trademark and protection against its infringement under Section 28 (1) of the Trademark Act 1999 (Rights conferred by registration).
iv) Furthermore, the Plaintiff claimed that owing to the continuous use of the mark ‘CHAKRA’ over a period of time, the edible oil products having label / mark ‘CHAKRA’ are distinctly associated with the Plaintiff.
v) The Plaintiff further claimed protection under Section 27 of the Trademark Act (No action for infringement of unregistered trade mark) against the Defendant, Landsmill Agro Private Limited, for passing off their edible oil products as those of the Plaintiff.
vi) The Defendant, on the other hand, applied for registration of the Word Mark, ‘CHAKRA KOLHU’ for mustard oil, refined rice bran oil, refined soybean oil and processed oils for food.
vii) Thereafter, the Plaintiff filed a Notice of Opposition dated 12-07-2021 and currently, the Defendant’s Application is under ‘opposed’ stage.
viii) However, despite the Plaintiff’s opposition, the Defendant continued to sell edible oils under the Mark ‘CHAKRA KOLHU’ written in Hindi on the label of the product.
ix) The Plaintiff claimed that the Defendant has used deceptively similar style of writing and font on the label of its products, whereby, the Defendant has not only infringed the Plaintiff’s Trademark and Copyright, but has also sought to pass off its products as those of the Plaintiff, especially as both are dealing in edible oils.
High Court Observations
Aggrieved, the Plaintiff filed a Suit for Trademark and Copyright Infringement before the Delhi High Court in CS(COMM) 568/2021.
I) The High Court, in A. 14686/2021, allowed Ad-Interim Injunction, against the Defendant to the extent of using the Mark ‘CHAKRA KOLHU’, vide Order dated 12-11-2021.
II) The Defendant filed an A. 16119/2021 and sought for vacation of the Ad-Interim Injunction under Order 39 Rule 4 of the Code of Civil Procedure 1908 (CPC) (Order for injunction may be discharged, varied or set aside).
The High Court made the following observations, vide Order dated 22-12-2023:
1) That the Plaintiff obtained registration of the Work Mark ‘CHAKRA’ in Class 29 for edible oils for sale in the States of Uttar Pradesh, Uttaranchal and Uttarakhand,e.f. 28-06-2013.
2) The Defendant uses the Mark ‘CHAKRA KOLHU’, which is ex-facie similar to that of the Plaintiff and its products i.e. edible oils.
3) Although the kind of edible oil manufactured and sold by the Plaintiff and the Defendant are different i.e. mustard oil and multi-grain edible oil respectively, but the products still remain edible oils and ‘a manufacturer who manufactures one variety of edible oil today may well manufacture another tomorrow. A likelihood of confusion, therefore, exists.’
4) That the likelihood of confusion increases as the Defendant chose to print the labels with the Mark ‘CHAKRA KOLHU’ in a similar manner and style of writing and similar colour scheme and arrangement of features as that of the Plaintiff.
5) Further, the Defendant has used the entire ‘चक्र’ Mark of the Plaintiff in a similar manner and has separately used ‘कोल्हू’ below it in a smaller font. Hence, the Defendant has given prominence to the word ‘चक्र’ in the Mark and the addition of ‘कोल्हू’ in the Mark is unlikely to mitigate the possibility of confusion in the minds of the consumer.
6) Moreover, the Defendant also sells edible oils through the same outlets in the State of UP as that of the Plaintiff.
7) Furthermore, both Plaintiff and Defendant cater to the same consumer segment.
8) Hence, in the present case, the ‘triple identity test’ to determine the likelihood of confusion and consequent infringement, i.e. likelihood of confusion, location and target segment, has been established from the perspective of a consumer of average intelligence and imperfect recollection.
9) Further, as per Section 51 of the Copyright Act 1957 (When copyright infringed), copyright infringement occurs “when any person, without a licence from the copyright owner, or in contravention of a licence so granted, does anything, the exclusive right to do which vests, under the Copyright Act, in the copyright owner. Section 51(b) treats, as infringement, making for sale or displaying, for sale or hire, infringing copies of the work.”
10) Further, Section 14(c)(v) of the Copyright Act (Meaning of Copyright) “confers, on the owner of copyright in an artistic work, the exclusive right to make an adaptation of the work.” Adaptation means any use of such work involving its re-arrangement or alteration under Section 2 of the Copyright Act. Hence, the right to make any re-arrangement or alteration in an artistic work also vests in the copyright owner.
11) In the present case, there is substantial similarity between the Plaintiff’s and the Defendant’s Marks / Labels in respect of the print, colour scheme, etc. Hence, the copyright infringement by the Defendant has also been established, as the Defendant has used and sold similar products under the label which seems to be an unauthorised adaptation of the Plaintiff’s Mark / Label.
Thus, based on the aforesaid observations, the High Court held that the Defendant’s ‘CHAKRA KOLHU’ Mark has infringed the Plaintiff’s ‘CHAKRA’ Mark. Hence, the Plaintiff would be entitled to an injunction against the Defendant’s use of the Mark ‘CHAKRA KOLHU’ in respect of any product. As a result, the Plaintiff’s Suit was allowed and the Defendant’s I.A. 16119/2021 seeking vacation of the Ad-Interim Injunction passed against the Defendant, vide Order dated 12-11-2021 was dismissed.
The Indian Lawyer
 Section 28 of the Trademark Act 1999: Rights conferred by registration—
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
 Section 27 of the Trademark Act 1999: No action for infringement of unregistered trade mark
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof