Prayer: Original Applications have been filed under Order 14 Rule 8 of O.S Rules and Order 39 Rule 1 & 2 of CPC, for the reliefs as stated therein.
R. SUBBIAH, J.,
Original Application No. 154 of 2013 has been filed seeking for grant of interim injunction restraining the respondent, by themselves, their servants, agents, distributors or any one claiming through them from manufacturing, selling, from advertising and offering for sale using the same name AACHI used by the applicants and the trade mark/name AACHI AAPAKADAI CHETTINADU A/c Restaurant or any other similar Trade Mark name or similar sounding expression in any media and using the same in name board, invoices, letter heads and visiting cards or by using any other trade mark/name which is in any way visually or deceptively or phonetically similar to the Applicant's trade mark/name AACHI/AACHI CHETTINADU RESTAURANT and using the same in pouches, packets or using the mark in invoices, letters heads and visiting cards or part of their Hotel/Restaurant name any other trade literature or Menu Card by using any other trade mark, which is in any way visually or phonetically similar to the applicant's registered Trade Mark No. 1116254 or in any manner infringing the applicant's registered Trade Marks, pending disposal of the suit.
2. Original Application No. 155 of 2013 has been filed seeking for grant of interim injunction restraining the respondents by themselves, their agents or servants or any one claiming through or under them from marketing, selling advertising using in trade literature, menu cards, invoices, name boards, website, internet advertisements the mark/name Aachi Appakadai Chettinad A/c Restaurant in relation to the Restaurant or with respect to or any other food preparation or on any other business the impugned trademark/name which is in any manner deceptively or phonetically confusingly similar to the Applicant's Trade Mark/name AACHI/AACHI CHETTINADU RESTAURANT or in any other manner pass off their business or goods as and for that of the applicants, pending disposal of the suit.
3. The applicants herein are the plaintiffs and the respondent is the defendant in the suit.
4. The case of the applicants/plaintiffs in brief is as follows:-
4(1) The applicants/plaintiffs commenced their business in the year 1995 with the objective of manufacturing and marketing various kinds of masalas and spices. Over the years, the applicants have grown into one of the leading manufacturers and marketers of spices in India, by their sheer high quality and reliability and due to the enormous goodwill earned by the applicants in the course of their business. The applicants are presently dealing in over 400 different products with the Trade Mark “AACHI”. The applicants have also diversified their business activities and started manufacturing and marketing various kinds of consumer goods, within a short span of 17 years. The applicants in order to distinguish their various items of products from others, adopted the Trade Mark ‘AACHI’ for all their products and services. The expression ‘AACHI’ has become very popular because of their continuous and substantial usage of the mark over a decade. This Trade Mark has become very popular and a very valuable intellectual property of the applicants. No one can use the said expression AACHI for spices and masalas and other goods or services, for which the applicants are using the said mark. The mark is unique and distinctive of the applicants' goods and no one has used the Trade Mark AACHI for masala preparations and its allied preparations prior to the applicants. The applicants have honestly adopted the Trade Mark and have put in enormous hard work and labour and invested huge sums of money, for advertisement and sales promotional expenses. The applicants have been using the Trade Mark ‘AACHI’ with respect to almost all the masala preparations from the commencement of their business. The applicants have acquired enormous goodwill and reputation. In order to protect this intellectual property, particularly with respect to the Trade Mark, the applicants applied for the registration of trademark on 04.05.2000 in Class 20. The Registrar of Trade Marks, on consideration of the substantial use and reputation, granted registration for the Trade Mark “AACHI” under Registration No. 922594 in favour of the applicants. Since then, the applicants have become exclusive owner of this trademark ‘AACHI’.
4(2) The applicants have also obtained registration of the trademark AACHI CHETTINAD RESTAURANT under No. 1116254 on 03.07.2002 in respect of Food Preparations for Human Consumption like coffee, tea, coca, sugar, rice, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, biscuits, cakes, pastry, and confectionery, ice. The applicants have sole proprietary right over this mark. Any unthorized use of the same mark or similar Trade Mark would amount to infringement of the applicants' trademark.
4(3) While so, in December-2012 the applicants came across the respondent-restaurant bearing the name Aachi Aappakadai Chettinad A/c Restaurant, which is a blatant infringement of the applicants' registered Trade Mark ‘AACHI CHETTINAD RESTAURANT’. The two marks are visually and phonetically similar. The respondent-restaurant namely Aachi Aappakadai Chettinad A/c Restaurant is identical to the applicants' Trade Mark. The copy is total and consciously taken from the applicants' label with intention of taking undue advantage of reaping the benefit without sowing. The respondent's service is inferior in quality and substandard. Hence, according to the applicants, if the respondent/defendant is not stopped from using the identical trademark, then it will cause irreparable loss and hardship to the applicants/plaintiffs. Hence, the applicants/plaintiffs filed the present suit. Pending the suit, the plaintiffs have filed the above applications for the relief as stated supra.
5. This Court, by order dated 13.09.2013, while ordering notice to the respondent, has granted interim injunction for a period of four weeks.
6. On appearance, the respondent has filed applications in A. Nos. 1595 & 1596 of 2013 to vacate the interim injunction, contending as follows:-
6(1) The word ‘AACHI’ is a common Tamil word, which is prominently used in Chettinad region of Tamil Nadu. The simple meaning of the word ‘AACHI’ is elderly woman. This word is commonly used in relation to Chettinad Style of cooking. It is neither an invented word nor coined word of the applicants and hence, it does not carry any distinctive character. Hence, under Section 9(1)(a) of the Trade Marks Act, 1999, (for short ‘Act’) common words such as “AACHI” ought not to have been registered as a Trade Mark. Hence, the registration of the word “AACHI” is inherently incapable of becoming distinctive of any single person with respect to any product or service. The word ‘AACHI’ is used in relation to Chettinadu style of cooking and it is closely associated to the Karaikudi region. It is also customary for Restaurants offering Chettinad variety of dishes to use the word ‘AACHI’. Hence, the registration of the word ‘AACHI’ is violative of Section 9(1)(b) and (c) of the Act. It is not the claim of the applicants that the trademark acquired distinctive character even long prior to the registration. Hence, the word ‘AACHI’ is incapable of being registered under the aforesaid provisions of Trade Marks Act, 1999. Any such use of the word ‘AACHI’ by the respondent herein enjoys the protection offered by Section 30(2)(a) of the Act, despite the registration made by the applicants herein.
6(2) The respondent is a honest and bone fide user of the word ‘AACHI’ in relation to the Chettinad Restaurant run by them in the name and style of ‘AACHI AAPAKADAI CHETTINAD A/c RESTAURANT’. The respondent was not aware of the Trademark of the applicants. The respondent does not claim exclusive right or monopoly over the word ‘AACHI’ or ‘Karaikudi’ or ‘Chettinad’, since such words are generic in nature and not capable of being monoplised by any person. Similarly the applicants are not entitled to claim monopoly right over such words and wrongfully prevent others from using such generic words. Therefore, the registration of the Trade Mark ‘AACHI’ is contrary to the provision of the Trade Marks Act. Hence, there is no need to pass any interim injunction order by this Court. Thus, the respondent sought for vacating the interim injunction.
7. Learned counsel for the applicants submitted that the 1st applicant is the Registered proprietor of the Trademark “AACHI” in respect of various spices, condiments, goods and services. The 2nd applicant-Company is permitted to use the Trademark “AACHI” by way of a common law license. The applicants are the prior users of the trademark “AACHI” since 1995. At present, the applicants are the Registered Proprietors of the Trademark “AACHI” in respect of a variety of goods and services in various stylized marks. Among other marks, the 1 applicant is also the proprietor of the trademark “AACHI CHETTINADU RESTAURANT” under Reg. No. 1116254 in Class 30, from 03.07.2002 The applicants label mark was registered on 01.11.2004 The Trademark AACHI had acquired a secondary meaning on account of long usage. While so, in December 2012, the applicants came across the Restaurant run by the respondent at Chennai having the name “AACHI AAPAKADAI CHETTINADU A/C RESTAURANT”. The use of the said mark by the respondent has not been authorized by the applicants and hence, it amounts to infringement of Registered Trademark and Passing Off. The applicants are not objecting the use of AAPAKADAI CHETTINADU A/C RESTAURANT. The applicants are only objecting the use of word AACHI by the respondent. Thus, the learned counsel for the applicants prays to make the interim injunction order as absolute.
8. Per contra, the learned counsel for the respondent submitted that the word AACHI is a common Tamil word and it does not carry any distinctive character. Under Section 9(1)(a) of the Trade Marks Act, 1999, the common words such as ‘AACHI’ shall not be registered as Trade Mark. Hence, the registration of the word AACHI as a Trademark by the applicants is invalid. Since the word AACHI is a common word, the question as to whether the word AACHI carries any distinctive character or secondary meaning could be decided only at the time of trial. In this regard, the learned counsel for the respondent relied upon the judgment reported in AIR 1955 SC 558 (Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd.) wherein the Hon'ble Supreme Court has held that the word ‘Shree’ is a common word in India with multiple meanings and such common words are not entitled to protection. Similarly, the learned counsel for the respondent has relied upon the judgment reported in CDJ 2011 DHC 1174 (Bhole Baba Milk Food Industries Ltd. v. Parul Food Specialities Pvt. Ltd.), wherein the Division of Bench of Delhi High Court held that the registration would give protection for the Trade Mark as a whole and not to a particular word of common origin.
9. The learned counsel for the respondent has further submitted that though the applicants are the proprietors of the registered Trade Mark ‘AACHI’, they are primarily dealing with only Masalas and spices. Though the applicants have registered the Trademark AACHI CHETTINADU RESTAURANT on 03.07.2002, till date they have not used the said Trademark in respect of the restaurant business. While the word AACHI is being used as common word, the applicants cannot prevent the respondent from using the said word. In this regard, the learned counsel for the respondent relied upon the judgment reported in CDJ 2007 BHC 624 (Balkrishna Hatcheries v. Nandos International Ltd.), wherein the Bombay High Court has held that when the plaintiff has no business or goodwill or reputation in the business of running restaurant, there is no question of passing of by the defendants of their restaurant business or business of sale of sauces as that of the plaintiff. The learned counsel for the respondent has also relied upon the judgment reported in (1997) 4 SCC 201 (Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.), wherein it has been held by the Hon'ble Supreme Court that non-user of the Trademark should not be allowed to enjoy monopoly, otherwise, he will indulge in mischief of trafficking in Trademark and prevent all bone fide user of such common word.
10. By way of reply, the learned counsel for the applicants submitted that under Section 31 of the Trade Marks Act, the validity of the registered Trademark cannot be challenged on the ground that it was not registrable under Section 9 of the Act. Now, the respondent is seeking to challenge the validity of the appellants' trademark on the ground that it is of a descriptive expression. The Law provides for a separate procedure to challenge the registration under Sections 46 & 57 of the Act. The respondent has not chosen to invoke the said provisions. In support of her contention, the learned counsel for the applicants relied upon the judgment reported in AIR 1994 DELHI 239 (Daimler Benz Aktiegesellschaft v. Hybo Hindustan). In that case, the defendant therein was using the word ‘Benz’ in respect of their products like underwears. Hence, a suit was filed as against the defendant therein to restrain them from using the word ‘Benz’ with reference to underwears. In that case, the Delhi High Court held that ‘Benz’ as a name of a Car would be known to every family that has ever used a quality car and when ‘Benz’ is a name given to a very high priced and extremely well engineered Car, the defendant therein cannot dilute that, by user of the name ‘Benz’ with respect to a product like underwears. Thus, the Delhi High Court granted injunction in favour of the appellant therein.
11. For the same proposition of law, the learned counsel for the applicants has also relied upon the judgment reported in 1988 PTC 1 (Kmala Trading Co., Bombay v. Gillette U.K Limited, Middle Sex, England). In that case, as the tooth brushes were manufactured and sold in the Bombay market under the trademark “7 O'CLOCK” by the defendant therein, a suit was filed by the plaintiff therein who is the manufacturer of “7 O'CLOCK” blade. In that case, a defence was taken by the defendants stating that the goods manufactured by the plaintiffs and the defendants are different in nature and they are not available in the same shop and the customers of those goods are different. But, the said contention was rejected by the Bombay High Court observing that those goods are available in every shop including a small shop and they are daily requirement of every person. Thus, the Bombay High Court granted injunction.
12. It is yet another submission of the learned counsel for the applicants that the trademark AACHI is not a descriptive expression and it is only suggestive. The word ACCHI denotes a distinguished elderly lady. In support of this contention, the learned counsel for the applicants relied upon the judment reported in 2005 (30) PTC 1 (Godfrey Philips India Ltd. v. Girnar Food & Beveraes (P) Ltd.), wherein it has been held that even descriptive expressions can acquire exclusive right and a descriptive/laudatory trademark entitled to protection if it assumed a secondary meaning identifying it with a particular product or being from a particular source.
13. With regard to the contention raised by the learned counsel for the respondent that when the applicants are not carrying on business on the registered Trademark of a common word namely ACCHI, the applicants cannot prevent other bona fide users to use the said common word, it is the reply of the learned counsel for the applicants that the non-use of the registered Trademark only permits the action for removal of the registration on account of non-use under Section 46 of the Act and it does not permit others to use the trademark. In support this contention, the learned counsel for the applicants has also relied upon the judgment reported in AIR 1972 SC 232 (State of U.P v. Ram Nath).
14. I have carefully heard the learned counsel for the applicants as well as the learned counsel for the respondent and perused the materials available on record.
15. The applicants are carrying on business from the year 1995. The applicants diversified their business activities and started to manufacturing and marketing various kinds of consumer goods, within a short span of 17 years under the trade mark ‘AACHI’. The applicants herein are presently dealing with 400 different products with Trademark ‘AACHI’. They are primarily dealing with only masalas and spices. With an intention to protect their intellectual property, they registered their trademark ‘AACHI’ under Application No. 838786 dated 29.01.1999, Class-30. The applicants have registered their trademark ‘AACHI’ for their various products. Thus, the applicants continued to enjoy reputation over their registered Trademark.
16. On 03.07.2002, the applicants obtained registration of the Trademark AACHI CHETTINADU RESTAURANT under Registration No. 1116254. Though the applicants registered the Trademark AACHI CHETTINADU RESTAURANT in the year 2002, they are not using the said trademark for restaurant business. While so, during December 2012, the applicants came across the restaurant run by the respondent at Chennai bearing the name Aachi Aappakadai Chettinad A/c Restaurant.
17. It is the contention of the learned counsel for the applicants that since the applicants have registered the trademark AACHI CHETTINADU RESTAURANT in respect of the restaurant business, the respondent is not legally entitled to use the word/name ‘AACHI’ in the business of restaurant. Further, according to the learned counsel for the applicants, the mark AACHI by continuous and long usage by the applicants in their various products has acquired secondary meaning. Therefore, even assuming for a moment that the applicants are not carrying on restaurant business, the same will not give right to the respondent to run the restaurant business by using the applicants' trademark AACHI.
18. Per contra, it is the submission of the learned counsel for the respondent that the word ‘AACHI’ is a common word and it does not carry any distinctive character and under Section 9 of the Trade Marks Act, the common word such as AACHI ought not to have been registered. Though the applicants have registered the trademark AACHI CHETTINADU RESTAURANT in the year 2002, they are not carrying on hotel business; that since the word AACHI is a common word the applicants are not legally entitled to prevent the respondent from running the hotel business under the name of Aachi Aappakadai Chettinad A/c Restaurant.
19. In view of the above submissions made on either side, the following questions fall for consideration:_
(I) Whether the objection of the respondent under Section 9 of the Trade Marks Act that since the word AACHI is a common and generic word, the said word ought not to have been registered by the Registrar of Trade Marks, will serve as a ground for denying the relief of the applicants/plaintiffs in the suit filed by the applicants/plaintiffs for action of infringement.
(II) Since the applicants had registered the trademark ACCHI, whether the same would prevent the respondent from using the word AACHI in their restaurant business, especially when the applicants/plaintiffs are not using the trademark AACHI in their restaurant business.
(III) Whether the trade mark AACHI, as claimed by the applicants in their applications, by continuous and long usage has acquired a secondary meaning.
20. Question No. I:- Relying upon Section 9 of the Trade Marks Act, it is the objection of the respondents that the trade Mark AACHI is a common and generic word and the same ought not to have been registered by the Registrar of Trade Mark. But, I am of the opinion, under Section 31 of the Trade Marks Act, the validity of the registered trade mark cannot be challenged in the legal proceedings on the ground that it is not registrable under Section 9 of the Act. Section 31 of the Trade Marks Act reads as follows:-
“Registration to be prima facie evidence of validity_ (1) In all legal proceedings relating to a trade mark registered under this act (including applications under Section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under Section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.
Even if the trade mark is not registrable, the respondent is having remedy only before the Registrar of the Trade Marks under Section 57 of the Act to remove the trade mark from the register. Therefore, the objection raised by the learned counsel for the respondent that the trade mark AACHI is not registrable, will not serve as a ground to vacate the interim injunction granted by this Court pending disposal of the suit filed for action of infringement.
21(1).Question No. II:- It is the main submission of the learned counsel for the applicants that the applicants had registered the trademark AACHI in respect of masalas and spices. The applicants obtained 51 registrations in respect of their various products. Though the applicants are mainly dealing with masalas and spices, they had also registered the trademark AACHI CHETTINADU RESTAURANT in the year 2002 and the restaurant business is an allied business to the other businesses of the applicants, since they are dealing with various food products. The use of the words Aachi Aappakadai Chettinad A/c Restaurant by the respondent in their restaurant business would result in confusion and deception in the market; that the general public will assume that there is a business relationship between the applicants and the respondent, whereas there is no such relationship. In support of this submissions, reliance was placed by the learned counsel for the applicants on the judgments reported in AIR 1994 DELHI 239 (Daimler Benz Aktiegesellschaft v. Hybo Hindustan) and 1988 PTC 1 (Kmala Trading Co., Bombay v. Gillette U.K Limited, Middle Sex, England). It is submitted by the learned counsel that even in respect of dis-similar goods, Courts have granted injunction in favour of the plaintiff since the defendant used the trademark of the plaintiff in their business.
21(2) But, I find that in those cases, the word used as trademark is not a common or generic word and on the other hand, it is either an invented word or a coined word of the owner of the registered trade mark. In the instant case, the word registered by the applicant is “AACHI CHETTINADU RESTAURANT”. The word AACHI in Tamil means ‘Grand Mother’. Though the applicants identified themselves with their business in masalas and spices by using the trademark AACHI, all along they are not carrying on restaurant business, in respect of their registered trade mark AACHI CHITTINADU RESTAURANT. Unless and until the said trade mark ‘AACHI’ which is a common and generic word, is used as the trademark in every business, for which they have registered the said trade mark, in my considered opinion, they can not prevent the respondent from doing business by using the word ‘AACHI’ in respect of those businesses, which they are not using the trade mark ‘AACHI’. In fact, the judgment reported in (1997) 4 SCC 201 (Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.), gives a fitting answer to this issue. In the said judgment it has been held as follows:-
“47.The respondent Company got registration of its brand name ‘Charminar’ under the broad classification “manufactured tobacco”. So long such registration remains operative, the respondent Company is entitled to claim exclusive use of the said brand name in respect of articles made of tobacco coming under the said broad classification “manufactured tobacco”. Precisely for the said reason, when the appellant made application for registration of quiwam and zarda under the same brand name “Charminar”, such prayer for registration was not allowed. The appellant, therefore, made application for rectification of the registration made in favour of the respondent Company so that the said registration is limited only in respect of the articles being manufactured and marketed by the respondent Company, namely, cigarettes. In our view, if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bona fide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classification and by that process preclude the other traders or manufacturers from getting registration of separate and distinct goods which may also be grouped under the broad classification. If registration has been given generally in respect of all the articles coming under the broad classification and if it is established that the trader or manufacturer who got such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the trader or manufacturer enjoying the registration made in his favour. In our view, if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark. Looking to the scheme of the registration of trade ark as envisaged in the Trade Marks Act and the Rules framed thereunder, it appears to us that registration of a trade mark cannot be held to be absolute, perpetual and invariable under all circumstances. Section 12 of the Trade Marks Act prohibits registration of identical or deceptively similar trade marks in respect of goods and description of goods which is identical or deceptively similar to the trade mark already registered. For prohibiting registration under Section 12(1), goods in respect of which subsequent registration is sought for, must be (i) in respect of goods or description of goods being same or similar and covered by earlier registration and (ii) trade mark claimed for such goods must be same or deceptively similar to the trade mark already registered. It may be noted here that under Sub-Section (3) of Section 12 of the Trade Marks Act, in an appropriate case of honest concurrent use and/or of other special circumstances, same and deceptively similar trade marks may be permitted to another by the Registrar, subject to such conditions as may deem just and proper to the Registrar. It is also to be noted that the expression “goods” and “description of goods” appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods confirming a general description. The Trade Marks Act has noted distinction between description of goods forming a genus and separate and distinctly identifiable goods under the genus in various other sections e.g, goods of same description in Section 46, Sections 12 and 34 and class of goods in Section 18, Rules 12 and 26 read with Fourth Schedule to the Rules framed under the Act.”
The dictum laid down in the above said judgment would show that when the trademark registered by a person is a word of common nature, unless the said trademark is put in use in his business, he cannot prevent the other from using the said word in their business.
21(3) Though the learned counsel for the applicants relied upon number of judgments in support of her contention that even in the absence of similar goods, injunction was granted by the Courts, I find that in all those cases, the word used by the parties is either an invented word or a coined word and not a common word. Hence, the decisions relied upon by the learned counsel for the applicants cannot be made applicable to the present facts of the case.
21(4). The applicants are having protection under the Trade Marks Act only in respect of the products, which they are manufacturing and marketing, and not for the business, which they are not carrying on, since the word registered by them namely “AACHI”, is a common word. The applicants herein are not doing restaurant business, though they registered a trademark in respect of restaurant business. Hence, I am of the opinion that they are not entitled for interim injunction.
21(5) But, the learned counsel for the applicants relied upon the judgment reported in AIR 1972 SC 232 (The State of U.P v. Ram Nath) and submitted that even if the trademark is abandoned by a registered user, it can only furnish a ground for a person to make an application under Section 46 of the Trade Marks Act to have the trade mark removed from the registers and it does not entitle him to use a trade mark.
21(6) The factual aspects of that case would show that the respondents 1 to 4 therein, who are the partners of the firm M/s. Pannalal Durga Prasad of Nayalion, Kanpur, were minting gold coins with a trade mark said to be similar to that of the appellant therein viz., M/s. Habib Bank Ltd. Hence, a criminal complaint was lodged against the respondents therein under Sections 78 and 79 of the Trade and Merchandise Marks Act. In this regard, a letter was written by the Inspector of Trade Marks on behalf of the Director of Industries, to the Additional City Magistrate-I, Kanpur to take necessary action. On receipt of the said letter, the Magistrate directed the Police to register a case and investigate the same. Accordingly, a police report was made to the Magistrate, who adopted the procedure under Section 251-A under the old code of Cr.P.C by examining each of the respondents, after which he framed charges against them. During the course of the trial, the respondents therein filed an application stating that Habib Bank had stopped dealing in gold and does not manufacture gold coins and that it had also destroyed the dies and since 1954 the trade mark of Habib Bank had become ineffective and was thrown open to the public. But, the Magistrate had dismissed the application filed by the respondent and directed the production of the entire evidence on the next date. Against this order, a revision was filed before the Sessions Judge of Kanpur. The Sessions Judge made a reference to the High Curt recommending the quashing of the charge on the ground that “The principle of abandonment is given legal recognition in Section 46, Trade & Merchandise Marks Act which provides that a registered trade mark may be taken off the register if it was not used for continuous period of five years or longer”. The High Court had accepted the reference made by the Sessions Judge and quashed the proceedings against the accused for offences under Sections 78 and 79 of the Act, against which an appeal was filed before the Hon'ble Supreme Court. Only while dealing with the Sections 78 & 79 of the Trade and Merchandise Marks Act, the Hon'ble Supreme Court has held that since the trademark was abandoned, it will not entitled the accused person to use the trademark.
21(7) The dictum laid down in the said judgment would show that in a criminal case lodged under Sections 78 & 79 of the Trade mark and Merchandise Marks Act, the respondents 1 to 4 therein had taken a defence with an intention to escape from the criminal liability stating that since the Habib Bank had stopped dealing in gold and does not manufacture gold coins, the criminal case is not maintainable against them. The said judgment cannot be made applicable to the present facts of the case. In the case on hand, the point that has to be gone into is as to whether the word AACHI is a common word or not and if so, whether the said word is in usage by the applicants in their restaurant business, and whether the applicants are entitled for grant of interim injunction, since the applicants are alleging infringement of their trademark by the respondent. As observed earlier, the applicants are not entitled for grant of interim injunction, since the word AACHI registered by them in respect of restaurant business is a common word, and unless the same is put into use in the restaurant business, the applicants cannot prevent others from using the same. Therefore, I am not inclined to accept the submission made by the learned counsel for the applicants by relying upon the said judgment.
22. Question No. III:- It is yet another contention of the learned counsel for the applicants that the word ‘AACHI’ has been registered as Trademark of the applicants and by continuous and long usage of the said word AACHI by the applicants, it has acquired a secondary meaning. But, I am of the opinion, even assuming for a moment the word ‘AACHI’ acquired the secondary meaning, the applicant can claim protection only in respect of the products that they are manufacturing and marketing under the registered trade mark ‘AACHI’ and not for the business which they are not carrying on since the said trade mark is common word. Further more, whether the word AACHI has acquired secondary meaning or not in respect of Restaurant business could be gone into only at the time of the trial on the basis of the oral and documentary evidence that may be adduced.
23. In view of the above discussion, I am of the opinion that the applicants have not made out a case for granting interim junction. Hence, these applications are liable to be dismissed.
24. It is contended by the learned counsel for the applicants that the respondent has adopted the oval shaped label mark AACHI, which is the label mark of the applicants. But, the said contention was denied by the learned counsel for the respondent. However, it is made clear that though the respondent-company is entitled to use the word AACHI in their restaurant business, they are not entitled to adopt the oval shaped label mark, which is a registered label mark of the applicants.
In fine, the above applications are dismissed and the interim injunction granted by this Court is vacated. Consequently, Application Nos. 1595 & 1996 of 2013 are allowed.