The plaintiff has filed a commercial suit for infringement and passing off action for its registered trademark AMUL against the defendants as the defendant is using the trademark AMUL for candle.
None appeared on behalf of the defendants. The defendants were engaged in different business. The defendants were using the trademark AMUL for different goods i.e. Candle. The plaintiff was engaged in the business of milk and dairy products at national and international markets. The trademark AMUL is registered since 1958 in favour of the plaintiff.
Two issues of law are involved in this judgement.
Issue no. 1 : Whether the plaintiff is entitled to restrain the defendants for the identical trademark which is being used by the defendants for different goods.i.e.the goods for which the trademark AMUL has not been used by the plaintiff?
Issue no. 2 : Whether the Courts should grant judgement and decree invoking the provisions of Order 8 Rule 10 of Code of Civil Procedure, 1908(CPC)?
Let me discuss these issues here.
Issue No.1: Issue number one is related to the infringement of The trademark for the goods for which the plaintiff is not the registered proprietor. In other words the defendant is using the Trademark for different goods under such circumstances whether the plaintiff is entitled to be protected if his registered trademark is being used by the defendant for the different goods or services and such goods or services have not been used by the plaintiff.
Section 29(4) of The Trademarks Act plays very important role in this regard which says that A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which— (a) is identical with or similar to the registered trademark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.
For better understanding of this section, I have made a specific video on my youtube channel C.Bhatt-law study which is titled as Infringement of Trademark for dissimilar goods or services. In the provision of section 29(4) three criterias are provided by the legislature for invoking section 29(4) for the protection of registered trademarks in the case of infringement for dissimilarity of goods and services. The three criterias as mentioned in section 29(4) must be satisfied wholly unless they are satisfied wholly, section 29(4) is not applicable. Further if either of such criteria or conditions is satisfied, section 29(4) is not applicable.
Section 29(4)(a) says that the infringing mark must be identical with or similar to the registered trademark.
29(4)(b) says that the infringing mark must be used in relation to the goods or services which are not similar to the registered trademark.
29(4)(c) is very important which says that
(i) The registered trade mark has a reputation in India;
(ii)and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.
The above mentioned criterias mentioned in provisions of section 29(4)(c) must be satisfied by the plaintiff along with the criterias mentioned in 29(4) (a) and (b).
In the present case before Hon’ble Calcutta HC whether the plaintiff has satisfied the criterias of section 29(4)?
Replying to this question first of all the trademark Amul used by the defendant is identical with or similar to the registered trademark is required to be considered. The answer is in affirmative because the word Amul has been used by the defendant in exactly the same fonts as is used by the plaintiff.
Secondly the defendant has used the registered trademark Amul of the plaintiff in relation to different goods i.e. candles.
The third criteria has also been satisfied by the plaintiff as the registered trademark Amul of plaintiff has a reputation in India and thus use of the said mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of registered trademark.
Hence, the criterias mentioned in section 29(4) have been satisfied by the plaintiff. It is pertinent to note that the trademark Amul of plaintiff has been listed at number 66 in the list of well known trademark by trademark registry in the year 2013 IPAB has considered the trademark Amul as well known in the case of M/s. Kaira District Co-Operative Milk Producers Union Limited v/s Deputy Registrar of Trade Marks & Others OA/56/2011/TM/KOL and Miscellaneous Petition No. 150 of 2011 decided on 7th march 2013.
Issue No.2:
The issue no 2 is related to Order 8 Rule 10 of CPC. As the suit is filed in commercial division of Kolkata High Court, and the defendant has not remained present before the Court after being summoned, nor has he filed written statement in the case, the plaintiff has invoked the provisions of Order 8 Rule 10 of CPC which says that,
“ Procedure when party falls to present written statement called for by Court.- Where any party from whom a written statement is required under rule 1 or rule 9 fails to present the same within the time permitted or fixed by the Court, as the case may be, the Court shall pronounce judgement against him, or make such order is relating to the suit as it thinks fit and on the pronouncement of such judgement a decree shall be drawn up”.
As per the latest amendment in CPC in view of Commercial Courts Act, the defendant is not entitled to file written statement beyond the period of 120 days as per the proviso of Order VIII Rule 1. The proviso of Rule 10 of Order VIII says that “ [Provided that] no Court shall make an order to extend the time provided under Rule 1 of this Order for filing of the written statement.”.
Having read the section and proviso thereof it emerges out that
(1) It is the discretionary power of the court to pronounce the judgement against the defendant in absence of filing of written statement.
(2) The defendant is not permitted to file written statement beyond the period of 120 days in the commercial cases. ( That is not the issue in the present case).
Hon’ble Kolkata High Court has relied on the judgement of Hon’ble SC in the case of C.N. Ramappa Gowda vs. C.C. Chandergowda reported in{ (2012) 5 SCC 265 paras 25,26,27 }, has held that the present suit is a commercial suit under the Commercial Courts Act, and it it the clear intention of the legislature to dispose of the suits, having commercial nature expeditiously without being lingered. Further , The Court has also satisfied with the averments made in the plaint and the documents and affidavit produced by the plaintiff.
Hence, as per the opinion of the Court it is the fit case to invoke the provisions of Order VIII Rule 10 of CPC and accordingly the decree has been passed in terms of the prayer paras in favour of the plaintiff and against the defendant.
Author’s Opinion:
1) The protection of a well known mark is inevitable when all legal criteria are satisfied otherwise the motto of the declaration of a well known mark as mentioned in the Trademarks Act, 1999 becomes infructuous. Further in the present case the trademark AMUL has a well established reputation not only in India but beyond the border of India. Though the defendant has used the trademark AMUL for different goods, perhaps the plaintiff has not used its registered trademark for the said different goods, but non use of the plaintiff’s registered trademark, is not the criteria or defence for not satisfying the provisions section 29(4) of the Trademarks Act, 1999. When Legislature has with good intention of protection has incorporated the provisions of S. 29(4) in the Trademarks Act, 1999, the registered trademark must be protected if all the three conditions mentioned therein have been satisfied by the plaintiff. Hence, the decision of Hon’ble Kolkata High Court is just, apt and appropriate. It is noted that the trademark AMUL has satisfied all the conditions beyond the limit as it is declared as a well known mark. To be a well known mark is not the condition but a registered trademark having reputation in India is the condition. There is a difference between a well known mark and a registered trademark having reputation. The definition of a
well known trademark as provided in S.2(1) (zg) of the Trademarks Act, 1999 is silent about words used by the Legislature in Section 29 (4) ( c ) i.e. the registered trademark has a reputation in India. Hence it is possible that the well known trademark may not be registered as registration of trademark is not the criteria for being a well known trademark as per the definition of it but use of the mark is a must. In the present case AMUL is a registered and a well known trademark, hence, the
Hon’ble High Court has rightly protected it.
2) As far as Order 8 Rule 10 of CPC is concerned, in the present litigation scenario, it ought to be invoked by the Courts in the genuine cases when there is no written statement , when the defendant has never come up before the Court after the summons being served. The Courts ought to avoid pedantic approach to conduct the Trial by the plaintiff ex parte in the cases like AMUL to expedite the genuine commercial litigation with the more judicial consciousness based on the plaint and documents produced by the plaintiff.
Author
Chirag Bhatt
Advocate.
Detailed study. Good.
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