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Citation Codes
Equivalent Citations
citation codes
Case Number
Attorney(S)
  • Mr. S.N. Mookherjee, Sr. Adv.
  • Mr. Pratap Chatterjee, Sr. Adv.
  • Mr. Ratnanko Banerjee, Sr. Adv.
  • Mr. Arunabha Deb, Adv.
  • Mr. Jayanta Kr. Mitra, Sr. Adv.
  • Mr. Ranjan Bachawat, Adv.
  • Mr. Debnath Ghosh, Adv.
  • Mr. Sayan Roy Chowdhury, Adv.
  • Mrs. M. Dasgupta, Adv.
  • Mr. V. Dutta, Adv.
  • Ms. S. Majumder, Adv.
  • Mr. M. Mukherjee, Adv.
Judges
  • Soumen Sen, J.
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Cites
Cited by
Citation Codes
Equivalent Citations
citation codes
Case Number
Attorney(S)
  • Mr. S.N. Mookherjee, Sr. Adv.
  • Mr. Pratap Chatterjee, Sr. Adv.
  • Mr. Ratnanko Banerjee, Sr. Adv.
  • Mr. Arunabha Deb, Adv.
  • Mr. Jayanta Kr. Mitra, Sr. Adv.
  • Mr. Ranjan Bachawat, Adv.
  • Mr. Debnath Ghosh, Adv.
  • Mr. Sayan Roy Chowdhury, Adv.
  • Mrs. M. Dasgupta, Adv.
  • Mr. V. Dutta, Adv.
  • Ms. S. Majumder, Adv.
  • Mr. M. Mukherjee, Adv.
Judges
  • Soumen Sen, J.
See more information ...
Smart Summary

Factual and Procedural Background

This suit arises from a trademark dispute between the plaintiffs, Unilever Industries Private Limited and another, and the defendant, Kwality Limited, over the use of the trademark "Kwality" in relation to ice cream and dairy products. The plaintiffs claim assignment and proprietary rights over the "Kwality" trademark, tracing its origin to the original proprietors and subsequent assignments, including a Strategic Alliance Agreement dated 2nd June 1995 and a Deed of Assignment transferring rights to the plaintiff's predecessors. The defendant company, incorporated in the 1980s, has been using the name "Kwality" in relation to dairy products independently and claims continuous use without interruption. The dispute intensified after the plaintiffs discovered unauthorized use of the trademark by the defendant, who had switched from the trade name "Dairy Best" to "Kwality," allegedly causing confusion among consumers. The plaintiffs seek an injunction restraining the defendant from using the trademark "Kwality."

Legal Issues Presented

  1. Whether the plaintiffs hold exclusive proprietary rights over the "Kwality" trademark in relation to ice cream and related products.
  2. Whether the defendant is authorized to use the "Kwality" trademark or a similar mark in its corporate name and product branding.
  3. Whether the defendant's use of the trademark causes confusion or misleads consumers regarding the origin or association of the goods.
  4. The enforceability and implications of the agreement reached between the parties regarding the use and writing style of the "Kwality" mark and product categories.

Arguments of the Parties

Plaintiffs' Arguments

  • The plaintiffs claim assignment of the "Kwality" trademark from the original proprietors and assert proprietary rights through a series of agreements and registrations.
  • They emphasize continuous and extensive use of the "Kwality-Walls" trademark in ice cream and frozen desserts since 1995, resulting in wide reputation and goodwill.
  • The plaintiffs contend that the defendant's unauthorized use of the "Kwality" name, especially after switching from "Dairy Best," creates confusion and misleads consumers.
  • They rely on a Strategic Alliance Agreement and a Deed of Assignment to establish their superior rights over the trademark in specified product categories.
  • The plaintiffs seek an injunction restraining the defendant from using the trademark "Kwality."

Defendant's Arguments

  • The defendant was incorporated in the 1980s and has independently used the "Kwality" mark in relation to dairy products without interruption.
  • The defendant is not a party to the Strategic Alliance Agreement or Deed of Assignment and thus claims those agreements do not affect its rights.
  • The plaintiffs were aware of the defendant's use of the mark since at least 2002 but did not challenge it for several years.
  • The defendant holds registrations for the "KDILs Kwality" mark in Class 29 for milk and milk products since 2016.
  • The defendant argues that correspondence between the parties relates only to the writing style of the mark and does not concede any broader rights to the plaintiffs.
  • The defendant claims willingness to honor an agreement to restrict use of the original writing style and product categories but disputes the plaintiffs' interpretation of the agreement's terms regarding payments and implementation.

Table of Precedents Cited

No precedents were cited in the provided opinion.

Court's Reasoning and Analysis

The court acknowledged the complex history and devolution of the "Kwality" trademark, noting the plaintiffs’ claim as assignees and their long-standing use of the mark in ice cream and frozen desserts. It recognized that the defendant has independently used the "Kwality" name in dairy products for at least two decades and holds registrations for a variant of the mark in a different product class. The court examined the correspondence between the parties, particularly the defendant’s email dated 2nd December 2017, which reflected an agreement whereby the defendant would not use the original writing style of "Kwality" for its products and would refrain from entering the ice cream and frozen dessert categories under that brand. The court found that this email implied some superior right of the plaintiffs regarding the trademark’s use in certain categories. However, considering the defendant’s long-standing use of the mark in its corporate name and the potential irreparable prejudice that an injunction might cause to the defendant at this stage, the court balanced the equities. It imposed interim restrictions consistent with the agreement and required the defendant to deposit a sum as a condition precedent to continued use of the impugned mark, while also mandating periodic account filings to ensure transparency.

Holding and Implications

Interim relief granted with conditions:

  • The defendant, Kwality Limited, is restrained from using the original writing style of the "Kwality" trademark for any of its products and must continue to use its currently registered trademark "KDILS Kwality."
  • The defendant shall not enter the ice cream, ice lollies, and frozen dessert categories under the "KDILS Kwality" brand.
  • The defendant must deposit Rs. 1 crore with the Registrar, High Court, Original Side, by a specified date as a condition precedent for using the disputed mark; failure to do so will result in an injunction restraining use of the mark.
  • The deposited amount will be invested in a fixed deposit and maintained until the disposal of the application.
  • The defendant must maintain separate accounts related to sales under the "KDILS Kwality" brand and file quarterly accounts with the Registrar until further orders.

The decision balances the proprietary rights claimed by the plaintiffs with the defendant's long-standing use, avoiding immediate injunction that could cause irreparable harm to the defendant. No final determination on ownership or broader rights was made, and the matter is set for further proceedings. The order does not establish new precedent but governs interim conduct of the parties.

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    Unilever Industries Private Limited & Anr. v. Kwality Limited

    GA No.942 of 2018 With CS No.73 of 2018 IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction ORIGINAL SIDE UNILEVER INDUSTRIES PRIVATE LIMITED & ANR. Versus KWALITY LIMITED BEFORE: The Hon'ble JUSTICE SOUMEN SEN Date : 14th May, 2018. Appearance: Mr. S.N. Mookherjee, Sr. Adv. Mr. Pratap Chatterjee, Sr. Adv. Mr. Ratnanko Banerjee, Sr. Adv. Mr. Arunabha Deb, Adv. Mr. Jayanta Kr. Mitra, Sr. Adv. Mr. Ranjan Bachawat, Adv. Mr. Debnath Ghosh, Adv. Mr. Sayan Roy Chowdhury, Adv. Mrs. M. Dasgupta, Adv. Mr. V. Dutta, Adv. Ms. S. Majumder, Adv. Mr. M. Mukherjee, Adv. The Court : The advent of summer with mercury rising and unusual heat wave notwithstanding norwester Ice cream makes its demand inevitable and with Kwality ice cream which has gained immense popularity over a period of time it is only natural that right over the trademark Kwality in one day or the other would become a contentious matter with all the stakeholders likely to claim as far as they could go to establish its right over the others in relation to the said brand name. The instant suit is the outcome of a rivalry between the plaintiffs and the defendant in relation to the trademark Kwality. The plaintiff no.1 is not the original owner of the trademark. The plaintiff no.1 claims to an assignee of Kwality trademark from the original proprietor. The plaintiff no.2 and its predecessors are claiming to have been using the trademark Kwality since 1995 under a licence granted by the plaintiff no.1 and its predecessors and/or manufacturing and/or trading in a wide varieties of goods including ice cream/frozen desert. The petitioner has given narration of events and devolution of the trademark Kwality upon the petitioners. A detailed discussion on the devolution of the trademark upon the petitioners is not necessary at this stage, save and except that it has been acknowledged that Ghai and Lambas were the persons who conceived the mark Kwality and with the growth of business and the popularity gained over companies were incorporated and they have arranged their business amongst them with special emphasis on territories and they have accordingly re-arranged their business. It is stated that between 1982 and 1984 the shareholders of Kwality Frozen Foods Pvt. Ltd., agreed to bifurcate the business of the company into four territories and Kwality Ice cream India Ltd, Calcutta became the proprietor of the original trademark nos.178269, 255297 and 255298 since renumbered as 435334, 435335 and 435336 after bifurcation in respect of ice cream, ice cream on stick for eastern region. The petitioners contend that under the Strategic Alliance Agreement it was agreed that use of the Kwality/sub-Zero name in the corporate name shall be subject to the condition that Kwality Dairy India Limited which was a subsidiary of Kwality Ice Creams (India) Limited and described in the Strategic Alliance Agreement as K (East) shall at all times hold 1/3rd of the voting capital in companies 1 and 2 and 1/6th of such capital in companies 3 and 4 which includes Kwality Dairy India Limited and since K (East) is no more holding 1/6th of share capital in Kwality Dairy India Limited since 2002-2003, the use of Kwality/sub-Zero name in the corporate name by the defendant is unauthorized. The petitioner has made a further reference to deed of assignment of Kwality trademark between K (East) and Digital Securities Private Limited to show that in the recital it has been specifically mentioned that on a consideration of Rs.3 crores, K (East) has assigned and transferred to digital their right, title, claim and interest benefit, goodwill in relation to the said trademark as fully recorded in the schedules in favour of Digital being the predecessors in interest of plaintiff no.1. On 2nd June, 1995, Kwality Ice Creams (India) Ltd. and Brooke Bond Lipton India Ltd. entered into a Strategic Alliance Agreement dated 2nd June, 1995 by which Kwality Ice Creams (India) Ltd., inter alia, agreed to assign to Digital Securities Pvt. Ltd. the KWALITY trade marks with logo, signs and designs set out in Appendix 1 to the Deed of Assignment of Trade Marks. Prior to 2nd June, 1995 the respondents business in milk and dairy products was b2b business that is they were supplying/selling one or more of the said goods only to business houses as an ingredient used to manufacture and end product. For example, the respondent was selling milk/milk powder to the said Kwality Ice Cream (India) Ltd. for making ice cream. Pradeep Wig and Neera Wig who executed the said Strategic Alliance Agreement dated 2nd June, 1995 for and on behalf of the said Kwality Ice Creams (India) Ltd. were also the Directors and shareholders of the respondent company and the respondent company was then a subsidiary of the said Kwality Ice Creams (India) Pvt. Ltd. On 2nd June, 1995, Kwality Ice Creams (India) Ltd. assigned and transferred to the said Digital Securities Pvt. Ltd. its entire right, title, claim, interest, benefit, goodwill in or to the trade marks Kwality. The said trade marks included the trade marks registered in India under registration nos.435234, 435335, 435336 and 300824 all in Class 30 in respect of ice cream and the trade marks registered in Nepal and Bangladesh. On 1st March, 2013, the Bombay High Court allowed the amalgamation of Digital Securities Pvt. Ltd. of the petitioner No.1. Thereafter pursuant to a request on Form TM-24 made by the petitioner No.1 and Orders passed by the Registrar of Trade Marks thereon, the name of the petitioner No.1 was entered in the Register of Trade Marks as the subsequent proprietor, inter alia, of the aforesaid Registered Trade Mark Nos.178269, 255298, 255297, 300824, 435334, 435335, 435336, 435340, 435341, 435342, 435338, 435339, 338502, 338503 and 337765 all in Class 30. Between January, 1995 and March, 1997, Brooke Bond Lipton India Ltd. as a Licensee of Digital Securities Pvt. Ltd., continuously and extensively used in respect of ice cream/frozen dessert the aforesaid KWALITY trade mark along with the trade mark WALLS of Unilever Plc, the holding company of the petitioner No.1, under supervision of Digital Securities Pvt. Ltd. Since March, 1997, the petitioner No.2 as a licensee of the Digital Securities Pvt. Ltd. and later of the petitioner No.1, has been continuously and extensively using the said KWALITY- WALLS trade mark in respect of the ice cream/frozen desserts, under supervision of the petitioner No.1. The petitioner No.2 claimed that due to continuous and extensive use of the trade mark KWALITY-WALLS ever since 1995 in respect of ice cream/frozen dessert, large sales of the said goods bearing the said trade mark, wide publicity given to the said goods bearing the said trade mark and superior quality and taste of the said goods, the trade mark KWALITY-WALLS and the said goods bearing the said trade mark have acquired wide, immense enviable reputation and goodwill. The petitioners claimed that the said goods bearing the said trade mark are so widely and immensely popular that any use of the trade mark Kwality, which is the leading and essential feature of the petitioners said trade mark in respect of same or similar goods is bound to mislead the consumers to believe that the other goods bearing the trade mark Kwality are originating of petitioners or are in some way associated with the petitioners. The petitioners and their predecessors have been vigilant in protecting their right to the exclusive use of the trade mark KWALITY and in the past they have successfully stopped others from using the trade mark KWALITY. On January, 2016, the petitioners came to learn from an article published in The Economic Times dated 4th January, 2016 that one Gravis Holdings Pvt. Ltd. (formerly known as Kwality Frozen Foods Pvt. Ltd.) and another have filed a suit in the Delhi High Court against P.L. Lamba, Sunil Lamba and the respondent prayed inter alia for a decree of declaration that the Copyright Agreement dated 24th August, 2015 between P.L. Lamba and Sunil Lamba is null and void. The petitioners contend that the petitioners intervened at the Delhi High Court proceeding after they became aware of unauthorized using of the trademark Kwality by the defendant. It is further submitted that the respondent was using until recently the trade name Dairy Best and has recently switched over to Kwality with a view to create confusion in the mind of the public. On the aforesaid basis, the petitioner prays for an order of injunction restraining the defendant company from using the trademark Kwality. Mr. Ranjan Bachawat, learned senior advocate led by Mr. Jayanta Kumar Mitra, Senior Advocate representing the respondent submits that the respondent was incorporated in the year 1980s and they are no way connected with the plaintiffs. They have been using the mark Kwality in relation to dairy products since long without any interruption. The petitioners have been using the word Kwality as its corporate name openly since 1980s. The defendant is not a party to the Strategic Alliance Agreement or the Deed of Assignment. The said agreement cannot affect the right of the defendant to use the word Kwality. The respondent has independent right. The plaintiffs were aware of the fact that the defendant was using the word Kwality at least since 2002. They unsuccessfully intervened in the Delhi proceeding which was filed by the defendant in relation to the use of iconic kwality. The suit has since been withdrawn. At least for the last three years, the plaintiffs did not feel it necessary to question the right of the defendant to use the said mark which the plaintiffs have been using for at least

    30 years. Mr. Bachawat has produced two documents of registration of the mark KDILs Kwality in class 29 dated 1st April, 2016 and 22nd September, 2016. Mr. Bachawat submits that the email dated 2nd December, 2017 was in relation to key design principle framework and the said correspondence between the parties would not show that at any point of time the petitioners have come up with its claim over the use of word Kwality as it corporate name. The said email has to be read and understood in the context of using the original writing style of Kwality. Prima facie it appears that the respondent is using the word Kwality in relation to its business name for at least 20 years. The petitioner is a registered proprietor of the KDILS Kwality in Class-29 in respect of milk and milk products. The respondent is also the registered owner of the device mark of KDILS Kwality as shown in the registration certificate dated 1st April, 2016. The marks have been in use for the last two years. However it appears that there was discussion between the parties with regard to the writing style of Kwality in relation to its products and in its communication dated 2nd December, 2017 the defendant has offered the following :

    1. Kwality Limited (Kwality) will not use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDILS Kwality.

    2. Kwality will not get into Ice cream, Ice lollies and frozen desert categories with KDILS Kwality brand and HUL will not get into Dairy category with Kwality brand.

    3. Kwality will make an annual payment of Rs. with increase of after every year period till 30 year period post which the annual amount will remain flat till perpetuity.

    The said communication shows that the plaintiff had raised its reservation with regard to the use of the original writing style of Kwality being used for products of the defendant as also with regard to the category of the products to which it should apply. On such consideration, the defendant had agreed not to use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDILS Kwality and further agreed not to get into Ice cream, Ice lollies and frozen desert categories with Kwality brand. The defendant, however, wanted the plaintiff not to get into dairy category with Kwality brand presumably since the defendant was in dairy category with its trade names. The defendant has also agreed to make annual payment with increase periodically for a period of 30 years beyond which the annual amount would remain flat for perpetuity. The grievance of the plaintiff appear to be that after December, 2017 the defendant did not make any effort to implement the said agreement and indicate the amount the defendant agreed to pay annually as also the percentage by which it would increase after certain period of time. The defendant is not disputing the said agreement but wanted the court to read the said agreement with other matters which the defendant wants to bring on record by way of an affidavit. On a reading of the said email, prima facie, it appears that the defendant had agreed two things, firstly, not to use the original writing style of Kwality for any of its products and secondly, not to get into ice cream and frozen desert categories with KDILS Kwality brand. The defendant cannot wriggle out of its commitment. This email apart from anything else at least shows some superior right of the plaintiff in relation to the use of the word mark Kwality in relation to the categories mentioned in the said email. Considering the fact that the defendant has been using the word Kwality in conjunction with other words and was incorporated much before the dispute arose with no objection from the plaintiffs or any of them for using the word Kwality as a part of its corporate name and an order of injunction at this stage would cause irreparable prejudice to the defendant compared to that of the plaintiff if not granted at this stage, the following interim order is passed:

    a) Kwality Limited (Kwality) will not use the original writing style of Kwality for any of its products and continue to use its currently operational registered trademark KDILS Kwality.

    b) Kwality will not get into Ice cream, Ice lollies and frozen desert categories with KDILS Kwality brand. In addition to the aforesaid the defendant shall deposit with the Registrar, High Court, Original Side a sum of Rs.1 crore by Friday as a condition precedent for using their impugned mark appearing at page 542 of the petition, failing which there shall be an order of injunction restraining them from using the said mark. The Registrar, High Court, Original Side shall invest the said amount in a suitable fixed deposit account with a nationalised bank and shall keep the said amount renewed from time to time until the disposal of this application. The respondent shall also maintain a separate account in relation to the sale of products under the KDILS Kwality brand and shall file quarterly accounts from December, 2017 with the Registrar, High Court, Original Side upon intimation to the advocate on record of the plaintiffs until further orders. Affidavit-in-opposition shall be filed on 22nd June, 2018. Affidavit-in-reply thereto, if any, shall be filed on 6th July, 2018. The matter shall appear in the list under the heading Motion Adjourned on 16th July, 2018. (SOUMEN SEN, J.) B.Pal

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    Comments

    Unilever Industries Private Limited & Anr. v. Kwality Limited
    (May 14, 2018)