In CS(COMM) 280/2020-DEL HC- Use of infringing mark in form of translation or transliteration amounts to infringement, reaffirms Delhi HC
Justice Navin Chawla [23-12-2022]

Read Order: NEW BHARAT OVERSEAS v. KIAN AGRO PROCESSING PRIVATE LIMITED & ORS 

Mansimran Kaur

New Delhi, December 26, 2022: In a trademark infringement suit relating to the mark  ‘TAJ MAHAL’, the Delhi High Court has recently granted interim relief to the plaintiff company engaged in the business of processing, marketing and exporting rice after noting that mark in which the export was being made by the defendant was identical to the registered trade mark of the plaintiff and the goods for which it was used, was also identical. 

Referring to Section 29(9) of the Trade Marks Act, 1999 which states that where the distinctive element of a registered trade mark consists of or include words, the trade mark may be infringed by the spoken use of those words, the Single-Judge Bench of Justice Navin Chawla  said, “It is also now well settled that the use of the infringing mark in the form of a translation (same trademark but in a different language) or its transliteration amounts to infringement.”

It was the case of the plaintiff that the plaintiff has been engaged in the business of processing, marketing and exporting rice of various kinds, including basmati rice and non-basmati rice. It adopted and has used the mark ‘TAJ MAHAL’ in relation to rice since the year 1978 and has been selling the same all over India, as also exporting to Europe, U.S.A., Canada and the Middle East since the year 1978. The said mark is also registered in Class 30 under the provisions of the Trade Marks Act, 1999 read with the Trade Marks Rules, 2002.

The plaintiff had earlier filed the present suit impleading the first defendant company and its directors as the second & third defendants, the ‘Principal Commissioner of Customs, Custom House, Mundra’ as the fourth defendant and the ‘Master Cert LLP’ as the fifth defendant. 

In the original Plaint, it was pleaded that the first three defendants adopted the same mark ‘TAJ MAHAL’ for the manufacture and export of rice and a complaint regarding the same was made to the fourth defendant as the consignment of rice bearing the said mark was being exported to the Saudi Arabia via Mundra Port at Gujarat. It was pleaded that as the erstwhile-the fourth defendant  failed to act on the complaint, the present Suit was filed. It was further pleaded by the plaintiff that the erstwhile-the fourth defendant was impleaded for the proper implementation of any order passed by this Court.

Thereafter, the directors of the first defendant- company, were deleted from the array of parties.  Aggrieved by the above order of this Court directing the plaintiff to take steps to implead the  the fourth defendant  as a party to the present suit, the plaintiff filed an application  praying for recall of the said direction. The said application, however, was withdrawn by the plaintiff.

The plaintiff thereafter filed another application under Order I Rule 10 read with Section 151 of the CPC, seeking the impleadment of the present-fourth defendant,a which was allowed by this Court.As per the case of the plaintiff, the fourth defendant clandestinely obtained the registration of the impugned mark ‘TAJ MAHAL’ in Saudi Arabia, while continuing to import rice from the plaintiff.

After considering the submission of the parties, the Court noted that it was not denied by either the defendants that they had a prior use to that of the plaintiff or had any statutory rights in the mark ‘TAJ MAHAL’ in India. The first defendant did not claim any right in the said mark, and claimed to be affixing the same only for the fourth defendant while the fourth defendant claimed  such right only in Saudi Arabia. It was also not denied that the plaintiff was a registered proprietor of the mark ‘TAJ MAHAL’ in India and was using the same in India. 

Referring to sections 29(2)(c), 29(3),29(6) & 56, the Bench opined that the mark in which export was being made by the first defendant to the fourth defendant was identical to the registered trademark of the plaintiff and the goods for which it was  used, that is, rice, was  also identical. In terms of Section 29(2)(c) read with Section 29(3) of the Act, such use would amount to infringement of the registered trade mark of the plaintiff, the Bench held.

The Bench also refused to accept the submission that there would be no infringement as the mark was being affixed in Arabic language.

The only question, therefore, to be determined was whether affixation of the mark for the purposes of export would amount to ‘use in the course of trade’ under Section 56.

Noting that the plaintiff is the registered proprietor of the mark ‘TAJ MAHAL’ in India, though such registration was in challenge by a third party to this suit, ‘M/s KRBL’, the Bench held that as far the plaintiff and the first and fourth defendants are concerned, such registration, therefore, must operate unless cancelled on the action of ‘M/s KRBL’. 

Considering that the plaintiff was a prior adopter of the mark in India and Section 29(6) as well as Section 56(1) would inure to the benefit of the plaintiff and against the defendants, the Bench held that the mark being identical and the use of the same by the first defendant even for export of rice to the fourth defendant, would amount to infringement of the mark.

 Accordingly, the first and fourth defendants were restrained by way of an ad-interim injunction, from affixing the mark ‘TAJ MAHAL’ or any other mark deceptively similar to the registered marks of the plaintiff, for the purposes of selling or marketing rice in India or for export to the fourth defendant or to any other entity, during the pendency of the present suit.