Name of the Case – A. Kumar Milk Foods Pvt. Ltd. v/s Vikas Tyagi & Another 

yagi & Another CS (OS) No. 1627 of 2011 Decided On, 04 September 2013 At, High Court of Delhi By, THE HONOURABLE MR. JUSTICE S. MURALIDHAR

For the Plaintiff: S.K. Bansal, Pankaj Kumar, Santosh Kumar, Ajay Amitabh, Advocates. For the Defendants: U.S. Sharma, Advocate.

Published In:- Published In 2013 (55) PTC 469

ISSUE-

The Concern question of this case is whether A. Kumar Milk Foods Pvt. Ltd., being the registered owner of the mark “SHRIDHAR” in Class 29 for milk products, has the right to prevent the Defendants, Shreedhar Dairy Products, from adopting the Encouraging   similar mark “SHREEDHAR” in respect of some Equivalent products like ghee. The conflict also brings about the issue of how Sections 28(1) and 28(3) of the Trade Marks Act, 1999 come into force where both sides have registrations for virtually identical trademarks but in different goods classes—Class 29 for the Plaintiff and Class 30 for the Defendant. Besides, it has to be established if defenses like prior use, absence of territorial jurisdiction, waiver, estoppel, and acquiescence are adequate to preclude the Plaintiff’s claim for passing off and trademark infringement.

RULE-

According to the Trade Marks Act, 1999, more specifically Section 29, a registered mark is infringed where an individual other than the registered proprietor or a licensed user uses in trade a mark somehow Identical or Misleading similar to the registered mark in relation to the same or similar goods or services. The critical test is there whether such use is likely to lead to confusion or association in the minds of the public. In addition, Section 27(2) of the Act retains the common law action of passing off, which is a protection of unregistered trademarks founded on goodwill and reputation that has been acquired by use. In a passing off action, the 3 things have to be established by the plaintiff which are goodwill or reputation in goods or services, misrepresentation by the defendant likely to deceive the public, and damage to the goodwill of the plaintiff resulting therefrom. The leading or fundamental feature of a mark has always been considered to weigh heavily in the assessment of deceptive similarity by the courts. Notwithstanding the fact that a competing mark may have other elements in it, reproducing the essential or distinctive component of someone’s trademark can still constitute infringement or passing off, particularly when the goods are identical and targeted at the same class of consumers.

ANALYSIS-

The plaintiff A. Kumar Milk Foods Pvt. Ltd. alleged sole rights over the mark “SHRIDHAR” which it had obtained by assignment from the original owner, Mrs. Sadhana Goel. The plaintiff contended that the mark was being utilized in relation to ghee, edible oils, and dairy products since 2003 and was distinctive as a result of long, continuous, and extensive usage. The plaintiff had claimed that the defendants, trading as “Shreedhar Dairy Products”, had become users of a deceptively similar mark, “SHREEDHAR”, for the same class of goods. The plaintiff believed that the use of the challenged mark by the defendants resulted in confusion among customers because the two marks were phonetically, structurally, and visually similar, and both were used in the dairy business. It was also claimed by the defendants that they had reproduced the artistic elements of the plaintiff’s label, violating its copyright.

The plaintiff had backed its assertions by the report of the Local Commissioner, wherein it had discovered packaging and labels with the impugned mark at the premises of the defendants. The defendants, however, asserted themselves to be the earlier users of the mark “SHREEDHAR” from 2004 and accused the plaintiff of having reproduced their mark. They contended that their adoption was free and unbiased and proved it with documents like advertisements and sales bills. However, the plaintiff questioned the genuineness of the said documents, alleging forgery and even filed a proceeding under Section 340 CrPC for perjury. In addition, although the defendants averred that their business was confined to Uttar Pradesh, the plaintiff asserted that trademark protection was across the country and that the registration of the defendants could be opposed or revoked. Under these facts, the controversy revolved around who was actually the earlier user, whether adoption was fraudulent, and whether similarity between the marks will lead to confusion, thus constituting infringement and passing off.

CONCLUSION-

The Delhi High Court, taking into consideration the pleadings, documents, and the report of the Local Commissioner, held that the defendants’ adoption of the mark “SHREEDHAR” was misleadingly similar to the plaintiff’s registered mark “SHRIDHAR” and would lead to confusion in the market, particularly given that both parties sold identical products—dairy products. The Court held that the defendants had failed to satisfactorily prove their assertion of prior use or honest adoption. Additionally, the employment of almost similar packaging and brand attributes signified a conscious endeavor to capitalize on the plaintiff’s goodwill and reputation. In accordance with this, the Court issued a permanent injunction in favor of the plaintiff, enjoining the defendants from employing the offending mark “SHREEDHAR” or any other misleadingly similar mark in connection with dairy products. This ruling enforced the doctrines of trademark protection for earlier registered users and underlined that no variations, even slight differences in spelling, will secure a party if the overall impact is likely to confuse consumers.

 I concur with this finding because it preserves the right of a trademark owner to defend their brand identity against misuse and confusion, particularly when the competing mark is almost similar and utilized in the same business.