Trademark - There can be no right to the exclusive use of the word “MALABAR”.
IN THE SUPREME COURT OF INDIA
CIVIL APPELLATE
JURISDICTION
[RANJAN GOGOI, J.] AND [R. BANUMATHI, J.]
July 12, 2018
CIVIL APPEAL NO. 6642 OF 2018
(Arising out of SLP(C)
No.17445 of 2017)
PARAKH VANIJYA PRIVATE LIMITED …Appellant
Versus
BAROMA AGRO
PRODUCT AND OTHERS ...Respondents
J U D G M E N T
R. BANUMATHI, J.
Leave granted.
2. This appeal arises out of the order dated 01.03.2017 passed by the
High Court of Calcutta in AOPT No.349 of 2016 affirming the order of the Single
Judge in and by which it was held that the respondentdefendant is entitled to
use the word ‘MALABAR’ in conjunction with the mark ‘BAROMA’ for selling its
product - Biryani Rice. By the impugned order, the Division Bench has also
affirmed the findings of the Single Judge that subject to the outcome of the
suit, the respondents can pursue their application for registration of their
label.
3. Appellant-plaintiff claims to have been using the mark ‘MALABAR’
for selling Biryani Rice from 2001. The appellant filed the suit CS No.27 of
2012 for infringement and passing off special Biryani Rice under the mark “MALABAR
GOLD” or other mark/trade name which is identical with and/or deceptively
similar to the appellant’s trade mark ‘MALABAR’. On consideration of various
features of the respondent’s then mark and other materials, the learned Single
Judge vide
order dated 02.07.2012
granted interim injunction observing that there was similarity between the two
labels/marks and restrained the respondents/defendants from using the label
mark ‘MALABAR’. The Division Bench declined to interfere with the said order by
its order dated 14.09.2012.
4. While the suit and application for temporary injunction was pending
before the Single Judge, the respondents/defendants filed application for
vacating the order dated 02.07.2012 inter alia on
various grounds contending that the appellant is relying upon fabricated
documents and that the appellant cannot claim exclusive right over the mark ‘MALABAR’
and therefore, the interim order of injunction has to be vacated. The learned
Single Judge by its order dated 05.07.2016 which was passed with the consent of
the parties gave liberty to the respondents to file a supplementary affidavit
to clearly indicate the device/mark that the respondents proposed to use. The respondents filed application indicating the proposed
modification in their label by changing the get-up. After hearing the parties,
the interim order of injunction initially passed, was modified vide order dated 08.08.2016 to the effect that the
respondents shall be entitled to use the word ‘MALABAR’ in conjunction with ‘BAROMA’
where all the words and letters must be in the same font but the word ‘MALABAR’
may be increased with font size of not more than 25% than the rest of the words
or letters. Being aggrieved, the appellant-plaintiff has preferred appeal
before the Division Bench. The Division Bench dismissed the appeal by the
impugned order holding that the Single Judge has passed the order balancing the
interest of the parties who are having a substantial turn over in their
respective business.
5. We have heard Mr. Shyam Diwan, learned senior counsel appearing
on behalf of the appellant and Mr. Gourab K. Banerji, learned senior counsel
appearing on behalf of the respondents and perused the impugned order and
considered the materials placed on record.
6. The appellant is the registered owner of the label mark in Class-30
in respect of rice, flour and preparations made from cereals, bread, cakes,
biscuits, pastry and spices. The appellant sells Biryani Rice and the most
prominent feature of its label mark is the word ‘MALABAR’. The
appellant-plaintiff is granted registration in Class-30 for its products.
Class-30 of the classification of goods and services under the statute covers diverse
spices and other edible materials as wheat, rice, coffee, tea etc. In the
registration under Class-30, there is a disclaimer for the word ‘MALABAR’. The
disclaimer is worded thus:-
“Condition
& Limitation: REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE
EXCLUSIVE USE OF WORD ‘MALABAR’ AND ALL OTHER DESCRIPTIVE MATTERS”
7. The appellant though claims exclusive right
over the word ‘MALABAR’ since there is a disclaimer to the exclusive use of the
word ‘MALABAR’, the appellant has no right over the exclusive use of the word ‘MALABAR’.
The respondents have also inter alia brought
on record the materials to show the registration of other goods under Class-30
with the word ‘MALABAR MONSOON’ granted in favour of Amalgamated Bean Coffee
Trading Company Limited for Coffee Cream, Coffee included in Class-30. The
registration of the mark ‘MALABAR MONSOON’ under Class-30 also contains similar
disclaimer of the word ‘MALABAR’. Likewise, the label ‘MALABAR COAST’ has been
registered in Class-30 for Coffee, Tea, Cocoa, Sugar etc. in favour of Tropical
Retreats Private Limited which again contains a similar disclaimer for the
exclusive use of the word ‘MALABAR COAST’. Having regard to the materials
placed on record, we are of the view that the High Court rightly held that the
appellant cannot claim exclusive right over the use of the word ‘MALABAR’.
8. Insofar as the label mark used by the parties, we have perused the
label mark of the appellant selling Biryani Rice with word ‘MALABAR’ and also
the modified label mark of the respondents. The label of the respondents
containing the words “BAROMA”, “MALABAR”, “GOLD” are circled having a different
get-up from that of the appellant. By comparison of the two label marks, in our
view, both appear to be substantially different. There appears to be no
similarity between both the labels, more so, deceptive similarity. Keeping in
view the interest of the respective parties who are said to be having substantial
turn-over in their respective business, the High Court rightly held that the
respondents would be entitled to use the word ‘MALABAR’ in conjunction with ‘BAROMA’
with the different get-up as approved by the High Court. We do not find any
serious infirmity warranting interference with the impugned order.
9. Having regard to the various contentions raised by the parties, the
High Court rightly held that subject to the outcome of the suit, the respondent
can pursue their application for registration of the device. Both parties have inter alia raised
various contentions. Since the suit and the respondent’s application for
registration of its label with the marks thereon under Class-30 is pending, we
are not inclined to go into the merits of those contentions. Lest, it would
prejudicially affect the rights of the parties in the pending suit and
proceedings.
10. In the result, the appeal is dismissed. All the contentious
issues raised by the parties are left open to be resolved in the suit. No costs.
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