2016 (3) TMI 834 - HC - Indian Laws

Infringement of Trademark - injunction application - prayer made to restrain Hamdard from selling the herbal sweeten syrup, using the trademark HAMDARD JAM-E-SHIRIN - Held that - We have noted the rival arguments, but would not be dealing with the same, for the reason suffice it to capture the rival arguments and bring home the point that the arena of debate is rich with arguments on either side and therefore without pleadings by Hamdard it is not a case where Qarshi has such a strong prima facie case that injunction must ensue as a sequitur thereto. We do not comment upon whether Qarshi is guilty of suppressing relevant facts which a party claiming injunction must disclose i.e. disclaimers made by it in Pakistan for the reason this issue itself needs a full debate after pleadings are completed. We do not comment upon whether the documents filed by Qarshi would entitle it to an injunction against Hamdard in an action for passing off taking into account that Hamdard is a registered proprietor of the trademark which is under challenge for the reason the law is that in an action for passing off, where the defendant is the registered proprietor of a trademark, the slope to be climbed by the plaintiff has a high degree of incline, and for which documents have to be scrutinized and prima-facie opinion formed. It is not a case where an ad-interim injunction must ensue forthwith. The full debate needs to be postponed till Hamdard files the written statement and reply to the injunction application along with documents Hamdard relies upon. Noting that summons in the suit have yet to be served upon Hamdard, but because of notice served in the appeal, Hamdard is aware of the suit and the date of its listing i.e. May 17, 2016 (wrongly typed as May 17, 2015 in the impugned order), we direct that Hamdard shall file a written statement as also a reply to the injunction application within 30 days from today and for which we take on record that the appellant has supplied to learned counsel for Hamdard the suit plaint, application for interim injunction and all documents relied upon and as filed along with the plaint.

Summary

Issues Involved:
1. Trademark registration and passing off.
2. Interpretation of the trademark 'JAM-E-SHIRIN'.
3. Prior use and reputation of the trademark.
4. Disclaimers in trademark registration.
5. Grant of interim injunction.

Issue-wise Detailed Analysis:

1. Trademark Registration and Passing Off:
The primary issue revolves around Qarshi Industries Pvt. Ltd. (Qarshi) instituting an action for passing off against Hamdard Laboratories India and Hamdard National Foundation (Hamdard), alleging that Hamdard was selling its product under the trademark 'HAMDARD JAM-E-SHIRIN', thereby passing off its product as that of Qarshi. Qarshi had a trademark registration in Pakistan and a pending application in India, claiming to have sold the beverage since 1980 and having a presence in India.

2. Interpretation of the Trademark 'JAM-E-SHIRIN':
The learned Single Judge initially declined ex-parte ad-interim injunction, reasoning that 'JAM-E-SHIRIN' was highly descriptive of the product in Urdu, meaning a drink with a cooling effect. However, it was later clarified that 'JAM' means goblet and 'SHIRIN' means sweet in Urdu. This misinterpretation was conceded by both parties, leading to the argument that the common man in India would not understand the Urdu connotation of the words.

3. Prior Use and Reputation of the Trademark:
Qarshi argued that it was the prior user of the trademark since 1980, whereas Hamdard claimed user since 2008. Qarshi emphasized its extensive advertising and market presence in India since 2006. The argument was that the trademark was fanciful and not merely descriptive, thus deserving protection.

4. Disclaimers in Trademark Registration:
Hamdard highlighted that the trademark registration in Pakistan included disclaimers that Qarshi had no exclusive right to the words 'JAM-E-SHIRIN', 'E', and 'SHIRIN', and that the mark should be used with 'QARSHI KA'. This was not disclosed by Qarshi in the plaint, leading to the argument that Qarshi's reputation was linked to the combined use of 'QARSHI KA JAM-E-SHIRIN'.

5. Grant of Interim Injunction:
The court noted the richness of the debate and the need for proper pleadings before deciding on the interim injunction. It was concluded that Qarshi did not have a strong prima facie case for an ad-interim injunction at this stage. The court directed Hamdard to file a written statement and reply to the injunction application within 30 days, postponing the full debate until pleadings were completed.

Conclusion:
The appeal was dismissed, and the accompanying applications for staying the impugned order, granting an injunction, and appointing a local commissioner were also dismissed. Qarshi was permitted to file an application for preponement of the hearing date after pleadings were completed. No costs were awarded.