Sunstar Overseas Ltd. vs Rameshwar Dass Garg

S. Ravindra Bhat, J.—This order will dispose of IA 11829/2009 - an ad interim temporary injunction application. The suit claims permanent injunction alleging trademark infringement and passing off, unfair competition, rendition of accounts and damages etc.

The Plaintiff claims to be owner of the trademark "ALISHAN" and states that the mark has been used continuously and extensively by it since 2004 in respect of processed rice and also in the course of trade including export trade. It is submitted that the Plaintiff has spent considerable amounts towards publicity and sales promotion of its brand "ALISHAN"; the mark was registered on 21st September, 2009 under the Trademark Act in respect of rice, pulses/dal, spices, ready to eat food etc. It is submitted that "AALISHAN" mark has strong association with the Plaintiff, and in connection with those products or goods marked by it.

To substantiate its contention, the Plaintiff has relied upon documents which include photographs of its packaging material and copies of invoices numbering about 330 which are produced along with list of documents filed in support of the suit. The Plaintiff had filed a separate list of documents after the suit was instituted on 09.00.2009 On the strength of the suit averments and documents, the Court had granted an ex prate injunction against the Defendants on 11.09.2009. The second list of documents entered by the Plaintiff includes 92 invoices for the period 2006-2007 and the Plaintiff claims that it became aware of Defendant''s use of mark "AALISHAN" when it came across it in a trademark registration advertisement in the journal on 08.09.2008. It is submitted that the Plaintiff filed a notice for opposition to the grant of registration on 22.12.2008 which is pending. The Plaintiff complains that the Defendant is using "AALISHAN" in respect of similar products i.e. rice, Maida, suji, salt and other such condiments. The rival marks being closely similar, if not identical are bound to result in confusion, as to their origin, which would prejudice the Plaintiff. It is submitted that the Plaintiff is registered owner of trademark "ALISHAAN" which has acquired distinctiveness and exclusivity in relation to rice and other similar class of products. The Defendant''s adoption of similar mark amounts to infringement and also passing off, against which the Court must grant an ad interim injunction and confirm the order made on 11.09.2009.

The Defendant in its written statement contends to be a bona fide user of the mark "AALISHAN" in relation to rice and other products in Class 30 since 2002. It is alleged that the Plaintiff is well aware of the Defendant''s proprietary rights, claiming user of "ALISHAN" whereas Defendant has been a prior user of "AALISHAN" from 04.01.2002 in an artistic manner.

It is further stated that notice of opposition filed by the Plaintiff to the Defendant''s claim for registration states that the latter is using "ALISHAAN". The Defendant relies upon an advertisement of its mark "AALISHAN" in a trade journal such as Yavapai India, Yavapai Express, Grain Mirror etc. Copies of these advertisement dated 30.11.2007, 09.11.2007, February-March 2008, April, 2008 and June 2008 etc. have been produced. The Defendant also claims to be bona fide user of mark "AALISHAN" from a long time, and seeks to establish it by other materials which include copies of invoices; they are in respect of period June 2006-2007 and June 2007. The Defendant points out that the Plaintiff''s registration application made for "ALISHAAN" in 2004 and which was later granted was not on the basis of user but on the claim of "proposed to be used". The Defendant, however, submits that other materials on record also point out to the Plaintiff never having used the "ALISHAAN" mark as it claims in the suit. The Defendant relies upon an advertisement placed by the Plaintiff in respect of other brands such as "HALO" in trade directory of 2009 and similarly in the trade journal "Grain Mirror" for 2007-2008 and submits that the same also include Defendant''s advertisement "AALISHAN". It is thus argued by the Defendant that it belies the contention of prior user and adoption of "ALISHAAN" mark by the Plaintiff.

As discussed previously this Court had granted an ex prate injunction on the basis of Plaintiff''s submission about the continuous use and extensive use of the mark. The order also notes that the Plaintiff had produced more than 300 documents in the form of copies of invoice etc. to establish such usage.

In this case the rival marks "AALISHAN" (use of the Defendant) and the Plaintiff''s (ALISHAAN) are phonetically similar to the point of identity. The term "AALISHAN" in Hindi means "Magnificent". In relation to rice and other products or any kind of grain, the mark is facially arbitrary; yet at the same time, there is an attributive, or laudatory element, in so far as the mark appeals to the qualities of the product. There can be no doubt that the mark is arbitrary, but at the same time is a common word. It is even public juries. In such an event the user or adopter of the mark has to establish a fair degree of secondary meaning or acquired a distinctiveness of that mark in respect of the product. The Plaintiff claims to have achieved that. The question is whether that is so and the fact of this case the court ought to confirm the interim injunction granted earlier.

That the Plaintiff is the owner of the registered trade mark "ALISHAAN" and the same cannot be disputed. The question however, is, whether the Defendant is a bona fide prior or concurrent user or adopter of the similar "ALISHAAN" mark. It is here that prima facie analyses of the materials placed on record by the parties, after summons were issued, becomes relevant. The Plaintiff has undoubtedly produced a large number of invoices. Yet it is apparent that the invoices - contain some semblance of the description "ALISHAAN" product and relate to the period 2006 onwards. There is no material to substantiate usage of the mark prior to that time. The Defendant''s documents similarly annex some invoices for the same period i.e. 2006 onwards. It is also noteworthy that trade channels of both parties are common, in the sense that processed rice, usually passes thorough wholesale markets before ending in the retail chain and eventually finding its way into grocery shops. If such is the nature of trade, the Plaintiff claimed ignorance of the Defendant''s mark and that it became aware only in 2008, is prima facie unbelievable. Besides the Defendant''s reliance upon copies of invoices for the period 2006 onwards, advertisements in various trade journals and directories, which prima facie disclosed that the mark was advertised in such specialist publications from November 2007 onwards. Here a significant fact deserves to be highlighted i.e. that a trade Directory of 2009 and publication Grain Mirror of 2007-2008, both contain the Defendant''s "AALISHAN" and the description of Plaintiff''s product-not ALISHAAN" but HALO. There is not a single advertisement in any newspaper, trade journal or directory of the Plaintiff''s "ALISHAAN".

In several decisions of this Court including Biswaroop Roy Choudhary v. Karan Johar 136 (2006) DLT 458 and other rulings such as Standard Ideal Co. v. Standard Sanitary Mfg. Co. 1910 RPC 789 and Britannia Industries Ltd. v. Cremica Agro Foods Ltd. 2008 (38) PTC 89 the Courts have cautioned a circumspect approach where common words and phrases used in common parlance are sought to be used with exclusivity. It has been consistently held that in order to claim protection for such exclusivity, the Court must be satisfied that there is a minimum degree of acquired distinctiveness established from the record. In this case, clearly such evidence is lacking; on the contrary the evidence point bona fide use of the "AALISHAN" mark by the Defendant at least since 2006, if not earlier.

In view of the above discussion, this Court is of the opinion that the application for temporary injunction is to fail. The ex prate injunction granted on 11.09.2009 is hereby vacated. I.A. No. 11829/2009 is therefore dismissed with no order as to costs.

CS (OS) No. 1713/2009

List before Joint Registrar on 15.02.2011 to enable the parties to admit/deny the documents.

List before the Court on 01.08.2011 for framing of issues.