Amar Singh Chawalwala v. Shree Wardhman Rice & General Mills.

R.C Lahoti, J.— The plaintiff has filed a suit for permanent injunction restraining infringement of trade mark, passing off and for rendition of accounts, recovery of damages, etc. An application for the grant of ad interim injunction has also been filed in the suit.

2. According to the plaintiff, the plaintiff firm is engaged in the selection, processing and marketing of rice since the year 1952. In the year 1954, the plaintiff adopted Golden Qilla (word per se) and also device of Qilla as its trade mark so as to indicate its connection with trading in rice. In the year 1961, the plaintiff similarly adopted Lal Qilla (word per se) and also the device of Lal Qilla as its trade mark. In the year 1977, the plaintiff also adopted Neela Qilla and the device of Qilla as its trade mark in rice trade. The plaintiff has been continuously and extensively using the said trade marks and has acquired considerable reputation in connection therewith. Vide para 7 of the plaint the plaintiff has set out the figures of actual sales and publicity expenses running into lakhs of rupees for the years commencing 1970-1971 upto 1986-1987. In addition to the common law rights the plaintiff also holds statutory right to the exclusive use of the aforementioned trademarks by virtue of registration granted under the provisions of Trade and Merchandise Marks Act 1958 as per the following details:

TRADEMARK REGISTRATION NO. GOODS DATE Device of Qilla 180418 RICE 16.11.60 Golden Qilla (word per se) 201760 RICE 16.04.62 Lal Qilla Chapp (word per se) 202329 RICE 16-1-62 Lal Qilla (word & device mark) 249547 RICE 16-1-70 Neela Qilla 337140 RICE 16-6-79

3. The plaintiff further alleges that defendant No. 1, who is also engaged in processing and trading of rice has adopted mark HARA QILLA and device of Qilla in respect of rice processing and marketing by it. The goods are being sold under the said infringing mark by defendant No. 2 on behalf of defendant No. 1 and the abovesaid act of the defendants amounts to infringing the trade marks of the plaintiff as also to passing off goods by the defendants as of the plaintiff.

4. The defendants have denied the plaintiff having used trade marks GOLDEN QILLA (words per se) LAL QILLA and Neela Qilla (words per se). According to the defendants the entries pertaining to the registered trade marks claimed by the plaintiff are wrongly remaining on the register as the trade marks have been registered by the plaintiff without any bonafide intention to use them in relation to the goods. The defendant No. 1 is the proprietor of the trade mark Hara Qilla with device of fort in respect of rice having honestly adopted the same since 7.12.78 and contining its user thereafter. The defendant No. 1 filed an application for registration of HARA QILA with device of fort and the same was advertised in the trade mark journal dated 1.5.89 The trade mark of the defendant is absolutely different and distinct from the alleged trade mark of the plaintiff. There is no similarity between the mark and device of the plaintiff and therefore there is no room for any confusion. There is no phonetic or visual similarity between the two marks.

5. A brief resume of the documents shows that the registration of Hara Qilla applied for by the defendant was opposed by the plaintiff having taken out proceedings under Section 21 of the Trade and Merchandise Act, 1958. On 13.12.1993 the Assistant Registrar of the Trade Marks has sustained the opposition and rejected the defendant's application for registration. The opposition to the registration has been allowed on the ground available under Section 12(1), 11(a) and 18(1) of the Act. A review of the said order was sought for which too has been rejected vide order dated 19.9.1994

6. From the several documents filed by the plaintiff it is borne out prima facie that the plaintiff is the proprietor of the trade marks as claimed by him and has been using the said trade marks in the trade of rice. The material question that arises for decision is whether name HARA QILLA along with the device as used by the defendants can be said to be infringing the trade marks of the plaintiff and/or amounts to passing off the defendants' goods as that of the plaintiff.

7. There are two things arising for consideration; the name and the device. It is pertinent to note that the word QILLA has nothing to do with the rice trade. It is the innovative idea of the plaintiff associating the word QILLA with his trading in rice along with qualifying adjectives prefixed. The plaintiff's trade mark registrations show his having devised the device of a QILLA along with the words GOLDEN QILLA or simple GOLDEN written in stripe forming base of QILLA in the device. Having done so the plaintiff after a lapse of few years adopted the device of a QILLA along with the words LAL QILLA written in a strip forming the base of the photo of QILLA The photo of QILLA (fort) used along with GOLDEN QILLA does not appear to be replica of any well known fort. At least the plaintiff does'not allege so. However the device used along with LAL QILLA appears to be a replica of the well known historic Red Fort. Neela Oilla appears to be a trade mark words per se; it does not have any device along with it.

8. Either party has not brought on record photographs of their respective trade marks as they are being reproduced or impressed upon their products. However, photo copies of the trade mark registration certificates are available on record. I have already given a brief description of the plaintiff's trade marks as discernible from the above documents. The defendant's trade mark HARA QILLA as appearing in the Trade Mark Journal appears to be along with a device of Qilla. The defendant's Qilla is not identical or similar with the Qilla as used by the plaintiff as his device either with Golden Qilla or Lal Qilla. It is not the case of either party that the plaintiff is using the mark and/or device of Qilla in golden or red colours. So also it is not the case of either party that the defendant is using its name or device in green colour. To put it briefly, looking at the case of either party the colour scheme is not the subject matter of controversy either by way of imitation or by way of distinction.

9. Rice may be purchased by literates or illiterates alike. The test to be applied is of an innocent or unwary purchaser would be persuaded in purchasing the defendant's goods as those of the plaintiff though on account of reputation enjoyed by the plaintiff he was inclined to purchase the plaintiff's goods. The plaintiff's goods are not known by the name or mark of Qilla alone. On the plaintiff's own showing they are known as GOLDEN QILLA, LAL QILLA or NEELA QILLA. Any goods bearing the mark of HARA QILLA are not likely to be purchased by any one mistaking them as the goods marketed as GOLDEN QILLA, LAL QILLA OR NEELA QILLA. Replica of historical Red Fort is so well-known that anyone having a little idea of Red Fort would not mistake the defendant's Qilla as Lal Qilla. The device used by the plaintiff along with GOLDEN QILLA is so materially different from the device used by the defendant along with Hara Qilla that there is no likelihood of the customer inclined to purchase Lal Qilla Rice being deceived into purchasing Hara Qilla rice. There is no visual or phonetic similarity between the defendant's name and mark - and the plaintiff's name and mark-either of the three. Golden or Golden Qilla cannot be confused with Hara Qilla. So is the case with Lal Qilla and Neela Qilla. It is not the case of the plaintiff nor does it appear to be reasonable and plausible to assume that the goods of the plaintiff are being marketed or are likely to be marketed merely by using the name Qilla. Any one accustomed to or desirous of consuming the plaintiff's goods would certainly ask for Golden Qilla or Lal Qilla or Neela Qilla brand rice while any one desirous of purchasing the defendant's goods would ask for Hara Qilla brand rice. It is not suggested, nor is it borne out from the record that the defendants have tried to present their device of Qilla in such a manner as to look similar or deceptively similar with any of the device adopted by plaintiff. It is not the case of the plaintiff that any of the defendants has at any time attempted at it passing off the defendant's goods as those of the plaintiff.

10. It was submitted by the learned counsel for the plaintiff, that continued use of trade names Golden Qilla, Lal Qilla and Neela Qilla for a number of years prior to the filing of the suit goes to show that the plaintiff has developed ‘a family of marks’ wherein the word Qilla is qualified by a prefixing name of a colour and the defendant's attempt at use of the word Qilla by prefixing the name of a colour (HARA-green) defeats the plaintiff's right by reference to family of marks. The contention does not deserve to be sustained. In McCarthy on Trademarks and Unfair Competition Vol 2 the following passage occurs in para 23.19 at page 71.

“The point is that the “family of marks” argument does not exempt a mark from the standard tests of trademark protection. In most cases, use of the “family” argument appears to add little, if anything, to a straight argument of a likelihood of confusion between plaintiff's marks and defendant's mark. The family of marks argument is often raised but infrequently bears fruit. Many courts view the argument with suspicion because it appears that the plaintiff is seeking protection of an ordinary and undistinguished syllable”

11. For the foregoing reasons, I am of the opinion that there is no case made out for the grant of ad interim injunction to the plaintiff.

12. I.A.No 6222/89 under Order 39 Rules 1-2 CPC is, therefore rejected. I.A 9711794 which was merely an application seeking early hearing be treated as disposed of.