Introduction
The judgment delivered by the High Court of Delhi in Shree Rajmoti Industries Vs Rajmoti Foods Products is an important decision in Indian trademark jurisprudence dealing with the question whether mere filing of a trademark application can amount to infringement or passing off.
The Court examined the scope of Sections 18 and 29 of the Trade Marks Act, 1999 and clarified that a trademark application itself reflects intention to use the mark in trade and can constitute a sufficient threat to justify a quia timet action and grant of permanent injunction.
The case is significant because the Defendant was not actively participating in the proceedings and there was limited evidence of actual commercial sale of goods.
Despite this, the Court protected the long-standing trademark rights of the Plaintiff by recognizing that an application seeking registration of an identical mark was itself enough to establish imminent threat to the proprietary rights of the registered proprietor.
The judgment also reiterates the principle that prior user and prior adopter enjoy superior protection under trademark law.
The Court emphasized that where a party has been using a trademark for several decades and has built substantial goodwill and reputation, adoption of an identical mark by another party, even through a trademark application, cannot be permitted.
Factual And Procedural Background
The Plaintiff, Shree Rajmoti Industries, instituted a commercial suit seeking permanent injunction against infringement of trademark, passing off, delivery up and other ancillary reliefs against the Defendant, Rajmoti Foods Products.
The Plaintiff stated that it had adopted the trademark “RAJMOTI” in the year 1962 and had continuously used the mark as its trademark, trade name and trading style.
The mark was registered in several classes including Classes 29, 31, 32, 35 and 42 under the Trade Marks Act, 1999.
The Plaintiff was primarily dealing in edible oils and had also secured copyright registrations in the artistic label and style of writing of “RAJMOTI”.
Plaintiff’s Business And Trademark Rights
- Trademark adopted in the year 1962
- Continuous and uninterrupted use of “RAJMOTI”
- Registered trademark in multiple classes
- Business primarily related to edible oils
- Copyright registrations obtained for artistic label and style
The Plaintiff placed on record its sales figures from 1996 to 2004 showing annual sales exceeding Rs. 200 crores.
It was also stated that the products were advertised through the website “www.rajmoti.com”.
Details Of The Defendant’s Trademark Application
The dispute arose when the Plaintiff discovered that the Defendant had filed Trademark Application No. 2322047 in Class 30 for the mark “RAJMOTI BRAND”.
The Defendant claimed user since 1 April 1995 in respect of:
- Flour
- Cereals
- Coffee
- Tea
- Sugar
- Bread
- Pastry
- Spices
- Allied food products
Plaintiff’s Allegations
According to the Plaintiff, use of the expression “RAJMOTI” as a trademark and trading style by the Defendant amounted to infringement of the Plaintiff’s registered trademark and also constituted passing off.
Procedural History Of The Case
The suit was initially listed before the Delhi High Court on 28 May 2014.
Notice was issued in the injunction application and a Local Commissioner was appointed.
However, the local commission could not be executed because the premises of the Defendant were found locked.
Several attempts were made to serve the Defendant.
Eventually substituted service through publication was carried out.
On 13 March 2018, the Defendant was proceeded ex parte.
The Plaintiff relied upon earlier decisions of the Delhi High Court to argue that where the Defendant chooses not to appear, formal recording of oral evidence may be dispensed with.
Dispute Before The Court
The principal issue before the Court was whether mere filing of a trademark application by the Defendant for the mark “RAJMOTI BRAND” constituted sufficient basis to grant permanent injunction for trademark infringement and passing off.
The Plaintiff argued that filing of the trademark application itself demonstrated clear intention to use the mark and therefore constituted “use” within the meaning of the Trade Marks Act, 1999.
The Defendant had not appeared before the Court to contest the proceedings.
Therefore, the Court had to determine whether the Plaintiff could succeed solely on the basis of the trademark application and documentary material placed on record.
Another connected question was whether a quia timet action could be maintained where actual commercial sale of infringing products was not conclusively proved.
Key Legal Issues
| Issue | Description |
|---|---|
| Trademark Infringement | Whether filing a trademark application alone can amount to infringement. |
| Passing Off | Whether intention to use an identical mark creates actionable threat. |
| Quia Timet Action | Whether injunction can be granted before actual commercial sale is proved. |
| Prior User Rights | Whether prior adopter enjoys superior protection under trademark law. |
Important Takeaways
- Mere filing of a trademark application may constitute actionable threat.
- Trademark application reflects intention to use the mark in trade.
- Prior user and prior adopter receive stronger legal protection.
- Quia timet actions are maintainable even before actual sale is conclusively proved.
- Courts can grant permanent injunctions to prevent imminent trademark infringement.
Reasoning and Analysis of the Court
The Court returned the finding that the Defendant had applied for registration of a mark identical to the Plaintiff’s mark. The Court noted that the Plaintiff’s mark “RAJMOTI” was registered both as a word mark and label mark and that the dominant and essential feature of the Plaintiff’s labels was the word “RAJMOTI”.
The Court also took note of the fact that the Plaintiff had been vigilant in protecting its trademark rights and had immediately filed objections before the Trademark Registry after becoming aware of the Defendant’s application.
The Court observed that the Defendant’s trademark application not only claimed use of the mark since 1995 but also showed adoption of the trading style “Rajmoti Foods Products”. The Defendant’s application therefore reflected a clear intention to commercially exploit the mark.
Reliance on Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd.
The Court relied heavily upon the judgment in Analco (India) Pvt. Ltd. v. Navodya Exim Pvt Ltd., 2014 (58) PTC 585 (Del), where the Delhi High Court had held that filing of a trademark application itself demonstrates intention to use the mark and that a suit for infringement or passing off can be maintained in anticipation.
Quia Timet Actions Under Trademark Law
The Court also referred to KRBL Limited v. Ramesh Bansal & Anr. concerning quia timet actions, where it was recognized that a trademark application reflects intention to use the mark in trade and may justify preventive relief.
Ex Parte Proceedings and Oral Evidence
Another important judgment referred to by the Court was Everstone Capital Advisors Pvt Ltd. & Anr. Vs. Akansha Sharma & Ors [CS(Comm)1028/2016 decided on 17th July, 2018] in which it was held that where a Defendant remains ex parte, the formality of recording oral evidence may be dispensed with.
Interpretation of Section 18 of the Trade Marks Act, 1999
The Court then examined Section 18 of the Trade Marks Act, 1999. It observed that a trademark application can only be filed by a person claiming to be proprietor of the trademark either through actual use or proposed use. Therefore, filing such an application inherently indicates intention to claim proprietary rights and to use the mark in trade.
Interpretation of Sections 2(c) and 29 of the Trade Marks Act, 1999
Court further interpreted Section 2(c) and Section 29 of the Trade Marks Act, 1999. The Court held that filing of a trademark application constitutes “use in relation to goods” and therefore can amount to infringement under Section 29.
The Court observed that the Defendant’s conduct created an imminent and grave threat to the Plaintiff’s rights. Since the Defendant had claimed use since 1995 and adopted the mark as part of its business name, the threat was real and substantial.
The Court emphasized that the Plaintiff was the prior adopter and prior user of the mark for more than five decades. Therefore, the Plaintiff’s statutory and common law rights deserved protection.
Importantly, the Court held that use of the mark “RAJMOTI” either as trademark or trading style violated Sections 29(1), 29(2) and 29(5) of the Trade Marks Act, 1999.
Final Decision of the Court
The Delhi High Court decreed the suit in favour of the Plaintiff and granted permanent injunction restraining the Defendant from using the mark “RAJMOTI” either as a trademark or trade name in relation to food products or goods allied and cognate to edible oil. All pending applications were disposed of and decree sheet was directed to be prepared.
Point of Law Settled in the Case
The judgment settled an important principle in trademark law that filing of a trademark application itself may constitute sufficient evidence of intention to use the mark and may amount to “use” under the Trade Marks Act, 1999.
The Court clarified that a trademark proprietor need not wait for actual commercial sale of infringing goods before approaching the Court. A quia timet action can be maintained where there exists imminent threat to trademark rights.
The judgment also reinforces the supremacy of prior user rights and confirms that adoption of an identical mark as part of business name or trading style may independently amount to infringement under Section 29(5) of the Trade Marks Act, 1999.
Key Legal Principles Emerging From the Judgment
- Filing of a trademark application may amount to “use” under the Trade Marks Act, 1999.
- A quia timet action is maintainable even before actual commercial sale begins.
- Prior user rights enjoy strong statutory and common law protection.
- Use of an identical trademark as a business or trading name may independently constitute infringement.
- Sections 29(1), 29(2), and 29(5) of the Trade Marks Act, 1999 provide broad protection against trademark infringement.
Case Details
| Case Detail | Information |
|---|---|
| Case Title | Shree Rajmoti Industries Vs Rajmoti Foods Products |
| Date of Order | 7 February 2019 |
| Case Number | CS (COMM) 335/2018 |
| Neutral Citation | 2019:DHC:834 |
| Name of Court | High Court of Delhi |
| Name of Hon’ble Judge | Justice Prathiba M. Singh |
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
