Section 28(3) of Trade Marks Act Protects Infringement Only for Similar Goods: Delhi High Court

Last week, Delhi High Court had to decide a trade mark dispute where an issue had arisen with respect to the usage of two similar trademarks. In A. Kumar Milk Foods Pvt Ltd. v. Vikas Tyagi& Ors, an injunction had been sought against the defendant for restraining it from using the trade mark which had alleged deceptive similarity with trade mark of plaintiff. The plaintiff, A. Kumar Milk Foods Pvt Ltd., was the proprietor of the registered trade mark, ‘SHRIDHAR’, which had been granted for Class-29 goods such as ghee, edible oils, milk, dairy products etc. The Defendants, Vikas Tyagi and M/s. Shreedhar Dairy Products, were the proprietor of a similar trade mark, ‘SHREEDHAR’, but the same had been granted for the Class-30 Goods, i.e., Atta, Maida and Besan. Though the defendants had also sought registration of ‘SHREEDHAR’ for Class-29 goods, the application is still pending and the same has been opposed by the plaintiff.

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In the present case, it had been claimed by the plaintiff that its trade mark had become distinctive and is associated with the above-mentioned Class-29 goods on account of its long, continuous and extensive use. The main problem of the plaintiff is the usage of trade mark, ‘SHREEDHAR’, by the defendant with respect to Class-29 goods since the same Class-29 goods are sold by the plaintiff under the trade mark, ‘SHRIDHAR’. As the impugned Class-29 goods are sold by the defendant under the trademark which is deceptively similar to that of the plaintiff, the same, according to the plaintiff, is the infringement of its trade mark. Further, it was the contention of the plaintiff that such an activity on the part of defendant has also lead to passing-off the impugned Class-29 goods as its goods. On the other hand, it has been the contention of the defendants that they have been using the trade mark, “SHREEDHAR”, since October 2003 and that their use of the trade mark was prior than that of the plaintiff. Contrary to the submissions of plaintiff, defendants submitted that it is the plaintiff which had copied its trade mark.

The defendants contended that they were protected under Section 28(3) of the Trade Marks Act, 1999 (“Trade Marks Act”). According to Section 28(3), where two or more have trade marks, which are either identical or nearly resemble each other, none of them would have a right to make a claim against each other. However, each of them will have a right against any third party. According to the defendant, the restriction on right under Section 28(3) is not dependent on the class of goods which trade mark is granted for but it is dependent only on whether the trade marks are identical or nearly resemble each other. On the other hand, it was argued for the plaintiff that defendant can be restrained from using trade mark, ‘SHREEDHAR’, in respect of goods for which it held the trade mark.

While granting injunction against the defendant, High Court was of the view that, under Section 28(1) of the Trade Marks Act, the plaintiff and the defendant are entitled seek protection against infringement of their respective trade marks for the goods of Class-29 and Class-30 respectively. However, as the plaintiff was seeking to restrain defendant to use the trade mark with respect to Class-29 goods, an injunction can be given can be given since the defendant. It is because defendants do not yet have a registered trade mark with respect to those goods. According to the High Court, the legislative intent was to provide protection for those goods in respect of which trade mark has been granted and not otherwise. Since registration of trade marks is meant to be for goods or services that have been specified in the Fourth Schedule under different ‘Classes’, it was clear that both the plaintiff and the defendant possessed similar trade mark for different goods. It was held by the Court that:

                                       “In other words Section 28 (3) of the TM Act should be understood as not permitting an infringement action being brought by one registered proprietor against another only where two conditions are satisfied: one, that the two registered marks “are identical with or nearly resemble each other”; and two, they are in respect of the same class of goods and services.”

Hence, under Section 28(1), restraining defendant from using the trademark, ‘SHREEDHAR’, with respect to Class-29 goods was permissible. Having analysed the situation and considering the contentions of the both the sides, an interim order was passed against the defendant.