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TMI Blog2016 (3) TMI 834X X X X Extracts X X X X X X X X Extracts X X X X ..... or 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. - FAO (OS) (COMM) 1/2016, CM Nos.4969-71/2016 - - - Dated:- 29-2-2016 - Pradeep Nandrajog And Mukta Gupta, JJ. For the Appellant : Mr.Sudhir Ch ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the product is a drink having cooling effect. Learned Single Judge has opined that prima facie the mark is not capable of registration under Section 9(1)(d) of the Trademarks Act, 1999 as it conveys the characteristic of the goods. There is an apparent typographic error because there is no clause (d) in sub-Section (1) of Section 9 of the Trademarks Act, 1999. The learned Single Judge has obviously referred to clause (b). 4. Qarshi is in appeal with a grievance, which is concededly correct, concerning the meaning assigned by the learned Single Judge to the word JAM and SHIRIN in Urdu language. The learned Single Judge has ascribed the meaning drink and something having cooling effect to the two words respectively. It admits of no doubt that in Urdu the word JAM means a goblet and SHIRIN means sweet. Mr.Pravin Anand, learned counsel for Hamdard conceded so, but with a caveat that tipplers understand JAM to be an alcoholic drink : 'Jam laga le yaar'. 5. The meaning ascribed to the word JAM and SHIRIN, by the learned Single Judge, conceded by Sh.Sudhir Chandra, Senior Advocate to be a Judge of great learning, has given ammunition to Qarshi that Urdu not being a common l ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e injunction must ensue as a matter of right. But Qarshi insisted for arguments to be heard and decision pronounced on merits. We therefore make it clear that the facts which we would hereinafter note would be neither determinative nor conclusive of an opinion to be formed and the facts as captured would be the ones necessary to give reason for our opinion as to why at this stage (when pleadings are yet to be completed) case is or is not made out for grant of a pro tem ad-interim injunction, pending consideration of the matter for grant of an interim injunction. 8. Arguments of learned senior counsel Mr.Sudhir Chandra for Qarshi was that in an action for passing off, merely because Hamdard was the registered proprietor of the trademark 'HAMDARD JAM-E-SHIRIN' was irrelevant, because Qarshi was in the market since the year 1980 and as regards Hamdard it had obtained registration of its trademark claiming user since the year 2008. Learned senior counsel urged that the words JAM and SHIRIN were words of Urdu and the Court should take judicial notice of the fact that a large segment of the population in India is not well-versed in Urdu and thus would not understand the words ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the proprietor having acquired right by long use of those parts on matters in connection with goods manufactured or sold or otherwise in relation to the trade. Summing up the submissions learned counsel urged that Qarshi was the prior user; it was the first in the world to market the product under the trademark 'JAM-E-SHIRIN'; it has advertised extensively in India and had spent money on the advertisements and had actually entered the Indian market in the year 2006. Relying upon the decision reported as AIR 1978 Delhi 250 Sanctuary Traders Vs. Roshan Lal Duggar, AIR 1995 Delhi 300 N.R.Dongre Vs. Whirlpool Corporation, 2004 (28) PTC 566 Satyam Infoway Pvt. Ltd. Vs. Sifynet Solutions Pvt. Ltd. and 2004 (28) PTC 585 Milment Oftho Industries Vs. Allergan Inc. it was urged that benefit of prior user must be given to the appellant. With reference to Rakhit's case (supra) it was urged that disclaimers are irrelevant in an action for passing off. With reference to the decisions reported as AIR 1993 SC 352 R.N.Gosain Vs. Yashpal Dhir, Jiva (supra) and 1999 PTC (19) 81 Dimmer dot Automatic Electric Vs. R.K.Dhawan, learned senior counsel urged that Hamdard having taken a stand b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... under said word mark. 10. 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. 11. The richness of th ..... X X X X Extracts X X X X X X X X Extracts X X X X
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