In case a party itself has applied for obtaining Trade mark registration, can
he take plea of the Trademark being common to Trade?
Or in other words, whether defence of Publici Juris
is available to a
party , who it self applied for obtaining Trade mark application?
This was one of the issue before the Hon'ble High Court of Delhi in Appeal
bearing No.FAO-IPD 23/2021 titled as Dhani Aggarwal Vs Mahesh Yadav.
This Appeal was filed by the Appellant whereby interim injunction application of
the Appellant was allowed in part.
The subject matter Suit was filed by the Appellant on the basis of proprietary
rights in the Trademark RAMU.
Suit was filed against use of Trademark RAMAA by the Respondent.
The Ld. Trial Court , after observing Trade Mark RAMU and RAMAA not to be
similar, however was pleased to restrain the Respondent from using outer similar
But the Ld. Trial Court also allowed the Respondent for using the inner
packaging. It was this order, which was challenged by the Appellant/Plaintiff in
the present Appeal.
The Court observed that though the Appellant's Label , but the dominant feature
of the Appellant's Trademark/Label was RAMU , hence the word mark RAMU in the
label is also equally worth of protection. Para 26.
Appellants goods were khurmani , munnakaa , but Respondents goods were Almod.
Though the Appellant did not deal with Almond however competing products of the
parties were held to be allied and cognate goods, being sold on the shape shop.
Hence there was possibility of confusion. Para 29
Trademark of the Appellant i.e RAMU and Respondent's Trademark RTC RAMAA were
held deceptively similar to each other. Para 38.
The Hon'ble Court rejected this argument of the Respondent that Appellant is not
using the Trademark which is registered in its favour, hence is liable to be
cancelled, on the ground that this ground has not been taken in the written
statement. Para 49-50.
Word RAMU was held to be arbitrary in relation to Appellant's products i.e. dry
products. Para 53
As the Respondent itself has applied for Trademark registration for trademark
RAMAA hence the same is estopped from alleging the trade mark of Appellant i.e.
RAMU to be publici juris. Para 53
The Court has reiterated this law in the ground that when a party itself asserts
trade mark right by applying for Trademark , then he can not take contrary plea
of the trademark being common to trade.
Accordingly the subject matter Appeal was allowed and the Respondents were
restrained from using the impugned Trademark RAMAA.
Case Law Discussed:
Dhani Aggarwal Vs Mahesh Yadav
Case No.FAO-IPD 23/2021
Delhi High Court
Navin Chawla, H.J.
Order Date: 22.08.2022
Written By:Ajay Amitabh Suman,
IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected]