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TMI Blog2014 (1) TMI 1217X X X X Extracts X X X X X X X X Extracts X X X X ..... the label of its products thus bringing it closer to the Plaintiff’s manner of writing ‘REAL’. The defence under Section 28 (3) of the TM Act would be available only if Defendant No.1 was using the entire mark for which it holds registration and not only a part of it - The invoices and other material produced by the Plaintiff show prima facie that it has been extensively marketing its ‘REAL’ juices throughout India for several years. The volume of sales is considerably higher than the products of Defendant No.1 in the State of Goa. The Plaintiff has been prima facie able to show that its products sold under the REAL label enjoy reputation and goodwill. Permitting Defendant No.1 to use the mark ‘REAL’ at this stage outside Goa will adversely impact the distinctiveness, reputation and goodwill enjoyed and will dilute the mark ‘REAL’ registered in favour of the Plaintiff. In terms of Section 29(2) read with Section 29(3) of the TM Act, identical marks in relation to cognate and allied goods, and in this case, similar goods, viz., Soda, aerated drinks and fruit juices of Defendant No.1 and fruit juices of the Plaintiff, are bound to cause confusion in the mind of a consumer of avera ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... idely marketed both in India and abroad and are known for their high quality and hygienic standards that meet the changing needs and tastes of consumers. 4. It is stated that one of the premium brands of the Plaintiff is packaged juice which was launched in 1994 under the trademark REAL . It is submitted that the juices are prepared from natural fruit pulp/juice concentrates mixed with water packed in Freshness Seal Packs. It is submitted that the trademark REAL is a suggestive mark having a remote suggestion that the juices have freshness of fresh fruits and is, therefore, not a descriptive trademark. It is stated that the trademark REAL , therefore, is entitled to protection as a suggestive and arbitrary mark. It is stated that, on account of long and continuous use since 1994, extensive marketing and sale campaign, the fruit juice sold under the mark REAL has acquired considerable goodwill and reputation amongst the members of trade and public at large and has acquired the status of a well-known brand which connotes the fruit juices originating from the Plaintiff exclusively. The sales figures of REAL for the years 1997-2012 have been set out in para 7 of the plaint. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , upon search with the Trademark Registry, found that Defendant No.1 has secured registration in favour of the trademark REAL MANIK in Class 32 under registration No. 2053267 dated 15th November 2010, on fact which had escaped the Plaintiff s attention. It is stated that Defendant No.1 has falsely claimed user since 17th September 1974 while applying for registration of the mark of the Plaintiff and the Plaintiff is taking steps to get it cancelled. There are stated to be other applications of Defendant No.1 for the trademark REAL in Class-32 for fruit juices and fruit flavoured drinks and other beverages, which are pending and the Plaintiff reserves its right to oppose those applications. 9. It is stated that, in the second week of May 2012, the Plaintiff came to know about the adoption and use of the impugned mark REAL by the Defendants through its sales officers who found infringing goods available in the markets at Delhi-Haryana border in a very small shop/kiosk selling water and other packaged drinks at roadside. It is stated that the representatives of the Plaintiff purchased the bottles and a sample of said infringing product was produced, but no invoice was issued ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mark REAL MANIK . Subject to the said modification, the interim order dated 1st June 2012 was maintained. 12. Aggrieved by the orders dated 1st June 2012 and 26th July 2012, the Defendant filed an appeal, being FAO (OS) No. 419 of 2012. The said appeal was disposed of by the Division Bench ( DB ) by order dated 3rd September 2012, the relevant portion of which reads as under: The ad interim ex parte order granted on 01.06.2012 by the learned Single Judge in favour of the respondents/plaintiffs stands varied by the order dated 26.07.2012 inasmuch as the appellant has been permitted to use the registered trademark REAL MANIK . Learned senior counsel for the appellant initially made a grievance of the deferment of the hearing on 26.07.2012, but we find that the reason for the deferment is the failure of the appellant to file the written statement. Not only that, it appears that the written statement has been filed even beyond 30 days and, thus, has still not been brought on record. It is stated that it is accompanied by an application for condonation of delay but the delay is yet to be condoned and no notice has been issued on the application, which is still not li ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on the Delhi side of the border. It is only in the replication that the Plaintiff has tried to explain that Defendant No.1 s products were found in the Delhi side of the border. The plea that Section 20 (b) CPC enables the Court to grant leave to the Plaintiff to sue Defendant No.1 overlooks the fact that the said provision envisages more than one Defendant, whereas, in the present case, Defendant No.2 has already suffered a decree and has gone out of the picture. Therefore, the question of the Court granting leave to the Plaintiff to sue Defendant No.1 for passing off does not arise. Consequently, this Court is unable to accept the contention of learned counsel for the Plaintiff that the present suit is maintainable as one for passing off. 16. Returning to the question of infringement of the Plaintiff s registered mark, it is clear that Defendant No.1 has no presence outside the State of Goa and it has been using the mark REAL MANIK or REAL SODA in relation to aerated drinks and fruit flavoured drinks. The arrangement put in place by the DB sufficiently protects the interests of Defendant No.1. Learned counsel for the Plaintiff stated that the Plaintiff would have no objecti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the Plaintiff s challenge to the validity of the registration in favour of Defendant No.1. That stage is yet to be reached. Therefore, the fact that Defendant No.1 is a registered proprietor of an identical mark in the same class cannot preclude the Plaintiff from seeking to restrain Defendant No.1 from using the mark REAL. 19. The other factor is that although Defendant No.1 holds a registration for the marks REAL MANIK and REAL SODA (with the words REAL CAFE written below it), it uses only REAL for its fruit beverages. Therefore, it is not using the whole mark for which it has registration, but only a part of it. Also, Defendant No.1 has recently changed the writing style of the word REAL on the label of its products thus bringing it closer to the Plaintiff s manner of writing REAL . The defence under Section 28 (3) of the TM Act would be available only if Defendant No.1 was using the entire mark for which it holds registration and not only a part of it. 20. The invoices produced by Defendant No.1 in support of prior use of the mark REAL pertain to sales, predominantly of Soda, within Goa. As pointed out by the Plaintiff, compared to the All-India sales fig ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... dant No.1 cannot be said to be honest. 23. In its written statement, Defendant No.1 has repeatedly stressed that it has only sold its product in the State of Goa and has never marketed or distributed its products in Delhi or Haryana as wrongly alleged by the Plaintiff. If that is the case, the balance of convenience is in favour of the Plaintiff to restrict the sale of the product by Defendant No.1 of its mark REAL only to the State of Goa. It is use alone that can give rise to goodwill. Unless extensive use is shown, it is not possible for Defendant No.1 to contend that it has built goodwill and reputation all over the country. 24. Consequently, the Court directs that, independent of the concession of the Plaintiff, the interim arrangement put in place by the DB by its order dated 3 rd September 2012 in FAO (OS) No. 419 of 2012 shall continue during the pendency of the suit. 25. It is clarified that the present order does not constitute a final opinion on the merits of the respective cases of the parties, which will be finally adjudicated upon after the trial. 26. IA No. 11394 of 2012 by the Plaintiff is disposed of in the above terms and IA No. 11656 of 2012 by Defen ..... X X X X Extracts X X X X X X X X Extracts X X X X
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