In its 1 September 2021 decision in Victoria Foods Private Limited v Rajdhani Masala Company, the Delhi High Court decided on an application filed by Victoria Foods Private Limited under order 39, rule 1 of Civil Procedure Code 1908 that sought, among other things, an ad interim injunction to restrain Rajdhani Masale from advertising its products and goods under deceptively similar or identical trademarks and labels.
Victoria claimed that it was the registered proprietor of the trademark RAJDHANI.
Figure 1: Victoria's registered trademarks
Sundar Lal Jain (father of Victoria's director RK Jain) originally adopted the trademark RAJDHANI in 1966. In 1983, he founded Victoria and carried forward the business under the trademark RAJDHANI. In a settlement agreement dated 31 March 2009, Sundar Lal Jain gave coexisting rights of the trademark to Victoria and Rajdhani Flour Mills (Victoria's sister company).
Rajdhani Masale manufactured products under the name and style of "Rajdhani Masale Co" and "New Rajdhani Masala Co". It claimed that it had been using the trademark since 1965 and was therefore the first in the market to use it. To establish prior use, Rajdhani Masale relied on the following information:
- A declaration was registered before the Calcutta sub-registrar of assurances which stated that Rajdhani Masale had been dealing and manufacturing since 1969.
- Rajdhani Masale has been registered with the central sales tax office since 1969 and registered with the Delhi sales tax rules with effect as of 16 April 1986. Due to a change in the tax regime, Rajdhani Masale has been registered under the Goods and Services Tax since 1 July 2017.
- Rajdhani Masale is registered with the Directorate of Agricultural Marketing. "Agmark" certification(1) of products manufactured and traded by Rajdhani Masale guarantee the superior quality of its products.
In its claim, Victoria put forward the following arguments:
- By continuous use of the trademark, Victoria has gained a great reputation and goodwill; the general public associates the trademark with and traces its origin to only Victoria. The sale invoices since 2007 and chartered accountant certificates certifying turnover for the past ten years were produced to indicate continuous use of the trademark RAJDHANI. For this argument, Victoria relied on the judgment in Nuts & Bolts Pvt Ltd v M/s Goodwill enterprises [ILR (2010) 1 Del 738].
- Rajdhani Masale had wilfully and in bad faith copied elements including the artistic work, trade dress, colour scheme, colour combination and writing on the packs to pass them off as Victoria's goods.
- The impugned trademark and trade name of "Rajdhani Masale" was identical and deceptively similar. Rajdhani Masale's operation method was to manufacture and sell inferior quality spices under the impugned trademark.
- Victoria held that it had become aware of the infringement by Rajdhani Masale only on 25 January 2021. Therefore, Rajdhani Masale's contention that there was a delay in approaching the court to seek an injunction was incorrect. Victoria relied on Crayons Advertising Limited v Crayon Advertising 2014 [SCC OnLine Del 218] to argue that delay should not prevent the court from passing an appropriate interim injunction in the claimant's favour.
- Rajdhani Masale had filed for registration of the impugned trademark and it was rejected on 19 October 2019 on the ground that there was a similar trademark already in existence.
- The sale invoices produced by Rajdhani Masale were from third parties. Not a single sale invoice had been produced by Rajdhani Masale that showed its use of the RAJDHANI trademark.
- Rajdhani Masale's online platforms contained hyperlinks to Victoria's website, so as to portray that Victoria and Rajdhani Masale are one and the same.
Rajdhani submitted the following arguments in its defence:
- Rajdhani Masale had been continuously using the trademark RAJDHANI and its variants since 1965. Victoria came into existence in 1983. Therefore, there was no question of Victoria using the trademark since 1966. Victoria claimed to have derived its right through a settlement agreement with Rajdhani Flour Mills Limited, but the settlement agreement had not been provided; it was only placed on record by way of a rejoinder.
- In relation to Victoria's claim that it knew about the infringement as of only 25 January 2021, Rajdhani Masale refuted the claim and contended that both Victoria and Rajdhani Masale had been operating from the same industrial area for the past 27 years. The parties had been immediate neighbours for the past 16 years, separated by only a single plot of land.
- Victoria had acquiesced to the existence and business of Rajdhani Masale and its usage of the impugned trademark. Victoria and Rajdhani Masale deal in completely different products. The cease and desist notice dated 18 July 2008 issued by Rajdhani Flour Mills Limited was rebutted by Rajdhani Masale's reply of 9 August 2008. As such, Victoria's contention about only knowing of the infringement since 25 January 2021 was false.
- The earliest documents filed by Victoria proving use of the trademark were from 2006. The alleged trademark registration certificate dated 2 August 1988 filed by Victoria was for a proposed usage. Victoria did not commence usage of the impugned trademark until 1988.
After considering the settlement agreement, the Delhi High Court held that Rajdhani Masale's claim that Victoria had no right to the trademark was without merit. The settlement agreement conferred the rights of the RAJDHANI trademark on Victoria. Admittedly, no steps have been taken by Victoria for the registration of the assigned trademark.
Registered documents produced by Rajdhani Masale indicated that they had been in business since the 1960s. However, it did not indicate that Rajdhani Masale had been using the RAJDHANI trademark for its products. Therefore, Rajdhani Masale's reliance on statutory documents filed before various authorities to show the date of usage were misplaced. Further, the sale invoices produced by Rajdhani Masale did not indicate the sale of products using the disputed trademark.
The reliance that Rajdhani Masale placed on the cease and desist notice issued in 2008 was the concern of Victoria's sister company, not Victoria. Thus, Rajdhani Masale needed to prove that Victoria was also aware of the disputed trademark's usage. Rajdhani Masale's claim that Victoria had delayed in approaching the Court to seek interim relief failed because the cease and desist notice did not demonstrate actual ownership of the RAJDHANI trademark in 1965.
The "first in the market" test has always enjoyed pre-eminence. Mere delay in bringing an action is insufficient to deny granting an injunction. The grant of injunction also becomes necessary if it appears prima facie that the trademark's adoption was dishonest.
Victoria was prima facie the first in the market and the registered owner of the trademark. Rajdhani Masale's use of the RAJDHANI trademark was identical to that of Victoria's trademark, thus it was infringing Victoria's rights.
In light of the above, the Court restrained Rajdhani Masale from using the RAJDHANI trademark or any other trademark which is deceptively similar to that of Victoria's trademark.
For further information on this topic please contact Nihal Shaikh or Nikhil Shirsekar at Clasis Law by telephone (+91 11 4213 0000) or email ([email protected] or [email protected]). The Clasis Law website can be accessed at www.clasislaw.com.
(1) A certification mark bestowed on agricultural products in India.