PARAKH VANIJYA PRIVATE LIMITED versus BAROMA AGRO PRODUCT AND OTHERS on 12 July 2018

PARAKH VANIJYA PRIVATE LIMITED

v.

BAROMA AGRO PRODUCT AND OTHERS

(Civil Appeal No. 6642 of 2018)

JULY 12, 2018

[RANJAN GOGOI AND R. BANUMATHI, JJ.]

Trademark – Appellant sold special Biryani Rice under themark “MALABAR”– Suit filed by appellant against respondents forinfringement and passing off special Biryani Rice under the mark‘MALABAR GOLD’ or other mark deceptively similar to ‘MALABAR’– High Court held that the respondents were entitled to use theword ‘MALABAR’ in conjunction with ‘BAROMA’ with modifications,for selling its Biryani Rice – On appeal, held: Though, appellant isthe registered owner of the label mark in Class-30, however, in thesaid registration u/Class-30, there is a disclaimer to the exclusiveuse of the word ‘MALABAR’ in terms whereof the appellant has noright over the exclusive use of the word ‘MALABAR’ – High Courtrightly held that the appellant cannot claim exclusive right over theuse of the word ‘MALABAR’ – Further, on comparing the label markof the appellant selling Biryani Rice with word ‘MALABAR’ and themodified label mark of the respondents, there is no similarity betweenthe two label marks – Impugned order not interfered with.

Dismissing the appeal, the Court

HELD: 1.1 The appellant is the registered owner of thelabel mark in Class-30 in respect of rice, flour and preparationsmade from cereals, bread, cakes, biscuits, pastry and spices.Class-30 of the classification of goods and services under thestatute covers diverse spices and other edible materials as wheat,rice, coffee, tea etc. In the registration under Class-30, there is adisclaimer for the word ‘MALABAR’. The appellant though claimsexclusive right over the word ‘MALABAR’ since there is adisclaimer to the exclusive use of the word ‘MALABAR’, theappellant has no right over the exclusive use of the word

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A‘MALABAR’. The respondents have also inter alia brought onrecord the materials to show the registration of other goods underClass-30 with the word ‘MALABAR MONSOON’ granted infavour of Amalgamated Bean Coffee Trading Company Limitedfor Coffee Cream, Coffee included in Class-30. The registrationof the mark ‘MALABAR MONSOON’ under Class-30 alsoBcontains similar disclaimer of the word ‘MALABAR’. Likewise,the label ‘MALABAR COAST’ has been registered in Class-30for Coffee, Tea, Cocoa, Sugar etc. in favour of Tropical RetreatsPrivate Limited which again contains a similar disclaimer for theexclusive use of the word ‘MALABAR COAST’. Having regardCto the materials placed on record, the High Court rightly heldthat the appellant cannot claim exclusive right over the use ofthe word ‘MALABAR’. [Paras 6, 7][970-C-D, F-H; 971-A]

1.2 The label of the respondents containing the words“BAROMA”, “MALABAR”, “GOLD” are circled having aDdifferent get-up from that of the appellant. By comparison of thetwo label marks, both appear to be substantially different. Thereappears to be no similarity between both the labels, more so,deceptive similarity. Keeping in view the interest of therespective parties who are having substantial turn-over in theirrespective business, the High Court rightly held that theErespondents would be entitled to use the word ‘MALABAR’ inconjunction with ‘BAROMA’ with the different get-up as approvedby the High Court. There is no serious infirmity warrantinginterference with the impugned order. [Para 8][971-B-D]

CIVIL APPELLATE JURISDICTION: Civil Appeal No. 6642Fof 2018.From the Judgment and Order dated 01.03.2017 of the High Courtat Calcutta in A.P.O.T. No. 349 of 2016.

Shyam Divan, Arvind Nayar, Gourab K. Banerji, Sr. Advs., HemantGDaswani, P. S. Sudheer, Rishi Maheshwari, Bharat Sood,Sanjay K. Shandilya, Gautam Roy, Apoorva Agrawal, Saurav Jana,Abhishek Singh, Hemant Sharma, Mushtaq Ahmad, Sahil Tagotra, Ms.Manisha Singh, Advs. for the appearing parties.

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The Judgment of the Court was delivered by

R. BANUMATHI, J. 1. Leave granted.

2. This appeal arises out of the order dated 01.03.2017 passed bythe High Court of Calcutta in AOPT No.349 of 2016 affirming the orderof the Single Judge in and by which it was held that the respondent-defendant is entitled to use the word ‘MALABAR’ in conjunction withthe mark ‘BAROMA’ for selling its product - Biryani Rice. By theimpugned order, the Division Bench has also affirmed the findings of theSingle Judge that subject to the outcome of the suit, the respondents canpursue their application for registration of their label.

3. Appellant-plaintiff claims to have been using the mark‘MALABAR’ for selling Biryani Rice from 2001. The appellant filedthe suit CS No.27 of 2012 for infringement and passing off special BiryaniRice under the mark “MALABAR GOLD” or other mark/trade namewhich is identical with and/or deceptively similar to the appellant’s trademark ‘MALABAR’. On consideration of various features of therespondent’s then mark and other materials, the learned Single Judgevide order dated 02.07.2012 granted interim injunction observing thatthere was similarity between the two labels/marks and restrained therespondents/defendants from using the label mark ‘MALABAR’. TheDivision Bench declined to interfere with the said order by its orderdated 14.09.2012.

4. While the suit and application for temporary injunction waspending before the Single Judge, the respondents/defendants filedapplication for vacating the order dated 02.07.2012 inter alia on variousgrounds contending that the appellant is relying upon fabricated documentsand that the appellant cannot claim exclusive right over the mark‘MALABAR’ and therefore, the interim order of injunction has to bevacated. The learned Single Judge by its order dated 05.07.2016 whichwas passed with the consent of the parties gave liberty to the respondentsto file a supplementary affidavit to clearly indicate the device/mark thatthe respondents proposed to use. The respondents filed applicationindicating the proposed modification in their label by changing the get-up. After hearing the parties, the interim order of injunction initiallypassed, was modified vide order dated 08.08.2016 to the effect that therespondents shall be entitled to use the word ‘MALABAR’ in conjunctionwith ‘BAROMA’ where all the words and letters must be in the same A

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Afont but the word ‘MALABAR’ may be increased with font size of notmore than 25% than the rest of the words or letters. Being aggrieved,the appellant-plaintiff has preferred appeal before the Division Bench.The Division Bench dismissed the appeal by the impugned order holdingthat the Single Judge has passed the order balancing the interest of theparties who are having a substantial turn over in their respective business.B

5. We have heard Mr. Shyam Diwan, learned senior counselappearing on behalf of the appellant and Mr. Gourab K. Banerji, learnedsenior counsel appearing on behalf of the respondents and perused theimpugned order and considered the materials placed on record.

C6. The appellant is the registered owner of the label mark inClass-30 in respect of rice, flour and preparations made from cereals,bread, cakes, biscuits, pastry and spices. The appellant sells BiryaniRice and the most prominent feature of its label mark is the word‘MALABAR’. The appellant-plaintiff is granted registration in Class-30 for its products. Class-30 of the classification of goods and servicesDunder the statute covers diverse spices and other edible materials aswheat, rice, coffee, tea etc. In the registration under Class-30, there isa disclaimer for the word ‘MALABAR’. The disclaimer is wordedthus:-

“Condition & Limitation: REGISTRATION OF THIS TRADEEMARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USEOF WORD ‘MALABAR’ AND ALL OTHER DESCRIPTIVEMATTERS”

7. The appellant though claims exclusive right over the word‘MALABAR’ since there is a disclaimer to the exclusive use of theFword ‘MALABAR’, the appellant has no right over the exclusive use ofthe word ‘MALABAR’. The respondents have also inter alia broughton record the materials to show the registration of other goods underClass-30 with the word ‘MALABAR MONSOON’ granted in favourof Amalgamated Bean Coffee Trading Company Limited for CoffeeGCream, Coffee included in Class-30. The registration of the mark‘MALABAR MONSOON’ under Class-30 also contains similardisclaimer of the word ‘MALABAR’. Likewise, the label ‘MALABARCOAST’ has been registered in Class-30 for Coffee, Tea, Cocoa, Sugaretc. in favour of Tropical Retreats Private Limited which again containsa similar disclaimer for the exclusive use of the word ‘MALABARH

COAST’. Having regard to the materials placed on record, we are ofthe view that the High Court rightly held that the appellant cannot claimexclusive right over the use of the word ‘MALABAR’.

8. Insofar as the label mark used by the parties, we have perusedthe label mark of the appellant selling Biryani Rice with word‘MALABAR’ and also the modified label mark of the respondents. Thelabel of the respondents containing the words “BAROMA”,“MALABAR”, “GOLD” are circled having a different get-up from thatof the appellant. By comparison of the two label marks, in our view,both appear to be substantially different. There appears to be no similaritybetween both the labels, more so, deceptive similarity. Keeping in viewthe interest of the respective parties who are said to be having substantialturn-over in their respective business, the High Court rightly held thatthe respondents would be entitled to use the word ‘MALABAR’ inconjunction with ‘BAROMA’ with the different get-up as approved bythe High Court. We do not find any serious infirmity warrantinginterference with the impugned order.

9. Having regard to the various contentions raised by the parties,the High Court rightly held that subject to the outcome of the suit, therespondent can pursue their application for registration of the device.Both parties have inter alia raised various contentions. Since the suitand the respondent’s application for registration of its label with the marksthereon under Class-30 is pending, we are not inclined to go into themerits of those contentions. Lest, it would prejudicially affect the rightsof the parties in the pending suit and proceedings.

10. In the result, the appeal is dismissed. All the contentious issuesraised by the parties are left open to be resolved in the suit. No costs.

Divya Pandey

Appeal dismissed.

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