Geepee Ceval Proteins and Investment Private Limited v. Saroj Oil Industry
2003 (27) PTC 190 (Delhi)
Plaintiff was a company engaged in the manufacture of edible oil, since 1997, being sold under the trade mark ‘Chambal’.
In 1997-1998, Plaintiff’s turn-over was about Rs. 113 crores and in 2003 at around Rs. 241 crores.
In February 2003, Plaintiff came to know that the Defendant was also selling oil under the trade mark ‘Chambal Deep’ using identical packaging and label.
Plaintiff filed a suit against the Defendant along with an application for grant of ad-interim injunction restraining the Defendant from using the trade mark ‘Chambal Deep’ and from passing off Defendant’s products as that of the Plaintiff’s.
Arguments on behalf of the Plaintiff:
• ‘Chambal’, being a geographical name can only be registered as a trademark upon evidence of distinctiveness and that a passing off action is maintainable.
• Trademark ‘Chambal’ is distinctive of the Plaintiff and addition of the word ‘Deep’ would not come to the rescue of the Defendant since the word ‘Chambal is the main and predominant word and it is sufficient to create confusion in the mind of an unwary customer, who has not a very sharp memory, to be confused and assume the goods sold under the trademark ‘Chambal Deep’ to be that of the Plaintiff.
• In Ruston & Hornsby Ltd. v. Zamindara Engineering Co.; PTC (Suppl) (1) 175 (SC) where the Plaintiff’s trade mark was ‘Ruston’ and the Defendant started selling its product in the trade name of ‘Rustam India’. Supreme Court held that the words ‘Ruston’ and ‘Rustam’ were phonetically and deceptively similar and that mere addition of the word ‘India’ to the Respondent’s trademark is inconsequential. Following the same analogy, the addition of the word ‘Deep’ is inconsequential.
Arguments on behalf of the Defendant:
• Defendant’s business is situated on the banks of the River Chambal whereas the Plaintiff’s industry is in Bundi, Rajasthan. Hence, the Defendant has superior rights for selling its products in comparison to the Plaintiff.
• The word ‘Chambal’, being a geographical name was not entitled to protection.
• As regards territorial jurisdiction of this court, it is alleged that the Plaintiff became aware of the sale under identical trademark Chambal in Gwalior market and no cause of action had arisen in Delhi for maintaining this suit.
• Defendant contends that the trademark of the Plaintiff is ‘Chambal’ while the trademark used by the Defendant for its products is ‘Chambal Deep’ and, therefore, both of them are so distinguishable that no trader or consumer would confuse them.
• As regards having jurisdiction to try this suit, it was alleged in the plaint that the Defendant was selling, distributing and marketing its oil in the trade name ‘Chambal Deep’ all over India which means in Delhi also. The Court also has jurisdiction under Section 62(2) of the Copyright Act. Hence, the Court may assume jurisdiction.
• Plaintiff has mentioned a number of well-known trademarks like Gwalior Suitings, Ganga Mineral Water, Taj Mahal Tea, Lal Quila Rice, Charminar Cigarette, Hindustan Petroleum, etc.
• ‘Chambal’, although is a geographical name, is capable of becoming a trademark and action for passing off based on it could be maintainable.
• The Court held that the word ‘Chambal’ used by the Plaintiff and the word ‘Chambal Deep’ used by the Defendant are phonetically and deceptively similar and they are likely to cause confusion and deception in the mind of the consumers and others in the trade so as to pass off the goods of the Defendant as that of the product of the Plaintiff. Plaintiff is likely to suffer greater inconvenience than that of the Defendant if ad interim injunction prayed for by it is declined at this stage. Plaintiff is using the trademark ‘Chambal’ since 1997′ whereas the Defendant has started using it very recently in 2001.
• The balance of convenience is in favour of the grant of interlocutory injunction and consequentially, the Plaintiff may also suffer irreparable loss to its business.
Hence, the Delhi High Court allowed the application and an interlocutory injunction was granted in favour of the Plaintiff and restrained the Defendant from manufacturing, selling or advertising directly or indirectly in dealing in oil under the trade mark ‘Chambal’ or ‘Chambal Deep’.
Author: Divyasha Mathur, ILS Law College, Pune