Bikanervala v. New Bikanerwala
2005 (30) PTC 113 (Del)
Facts of the case:
The Plaintiff is a partnership firm involved in manufacturing and marketing ethnic food including sweets and namkeens since 100 years. In 1981, they opened an outlet in Karol Bagh under the trade mark “Bikanervala”.
In 1992, Plaintiff also adopted an artistic label titled “Bikanervala” duly registered under The Copyright Act, 1957.
In 2004, Plaintiff found that the Defendant is running a shop and restaurant in Janakpuri under the trade mark “New Bikanervala”. In view of this, the Plaintiff has filed a suit for perpetual injunction restraining the Defendant from using the aforesaid trademark. The Plaintiff has also sought an order for rendition of account of profits illegally earned by the Defendant and also an order directing the Defendant to destroy all impugned items which used the disputed trademark.
The Plaintiff also filed an application for grant of ad interim injunction during pendency of the suit. The present decision is on that interim application.
Arguments on behalf of the Plaintiff:
• Once the word “Bikaner” is suffixed with “Vala”, the combined word becomes a coined and innovative word and the Plaintiff has an exclusive right to use it.
The Plaintiff’s trade has been a runaway success for more than two decades having goodwill and reputation. The trademark is so famous that it has acquired secondary significance and is highly distinctive.
There is a definite likelihood of confusion and deception among the trade and public.
• The Plaintiff contends that although the trade mark is a geographical name of a city, under the common law of passing off there are no exceptions by way of any geographical and/or descriptive names, which may constitute disqualification for statutory registration.
• In the case of Bharat Tiles and Marble Private Ltd. v. Bharat Tiles Manufacturing Company, 1978 GLR 518, Court laid down a principle of law that mere fact that geographical descriptive name adopted is not always a defense in a ‘passing off’ action. The Court also reiterated the settled position that name of the business can also be a trade name.
• The trade mark ‘BIKANERVALA’ has to be considered as a whole and it is not correct to split up the trade mark into its constituent parts and, therefore, the use of the trade mark ‘NEW BIKANERWALA’ results in passing off.
• The Plaintiff cited numerous cases in which the Court held that a generic or descriptive name which indicates the origin of the product could receive the protection against passing off.
Arguments on behalf of the Defendant:
• Plaintiff’s suit for the relief of passing off is not maintainable. “Bikaner” is a geographical city in Rajasthan and it does not qualify as a trade mark. The expression ‘Bikanervala’ conveys definite and specific meaning in ordinary language so as to indicate the origin of the person or the product from Bikaner.
• The expression “Bikanervala” is neither innovative nor original.
• The word “Bikanervala” for Bikaneri sweets, namkeens, etc is common as a generic expression and cannot acquire any degree of distinctiveness.
• No person is entitled to claim an exclusive right to the use of the word either ‘BIKANER’ or ‘WALA’ either independently or in conjunction. In this connection, provisions of Section 9 of the Trade marks Act, 1999 are relied upon which prescribe registration of the trade mark in the nature of geographical names or which have direct reference to the character and quality of the goods.
• Court is required to take only a prima facie view of the matter so as to see if the Plaintiff has been able to make out a good case in its favour for grant of such an ad interim injunction.
• A perusal of the documents submitted by the Plaintiff proving the fact that they have been using the trade mark “Bikanervala” since 1981 and that the artistic label has been registered since 2000, along with the undisputed fact that the Defendant started using “New Bikanervala” only in 2004, leads to prima facie conclusion that the Plaintiff was in fact long, prior and extensive user of the trade mark.
• Plaintiff’s trademark, ‘BIKANERVALA’ is entitled to protection. The Plaintiff is using the mark since more than 20 years; its turnover being more than Rs. 300 crores in the past few years. Plaintiff has made out a prima facie case in his favour. On the other hand, the Defendant has only prefixed “New”.The balance of convenience also lies in the Plaintiff’s favour.
• It was established that the trademarks/tradenames like ‘Kabuliwala’, ‘Rohtakwala’ et . despite being referable to geographical terms are good trademarks and have, in fact, been registered with the Registrar of Trademarks.
• In a case Laxmikant V. Patel v. Chetanbhat Shah and Anr., 2002 (4) PTC 1 (SC), the Hon’ble Supreme Court reiterated the general principle – “refusal to grant an injunction in spite of the availability of facts, which are prima facie established by overwhelming evidence and material available on record justifying the grant thereof, occasion a failure of justice and such injury to the Plaintiff would not be capable of being undone at a latter stage.”
Hence, the Plaintiff’s application was allowed and the Defendant was restrained by means of an ad interim injunction.
Author: Divyasha Mathur, ILS Law College, Pune