It was indeed a joyous moment for DCM Shriram when the Delhi high court while disposing off an interim application filed along with the appeal upheld the earlier orders passed by the single Bench in connection with the original suit. The legal proceedings started when DCM Shriram filed a suit for trademark infringement against Mukesh Khadaria before the single Bench Delhi High court in 2009 wherein the court granted an ex-parte ad-interim injunction in favour of plaintiff’s, thereby restraining the defendants, their agents, employees, associates and assigns from manufacturing, distributing, selling, storing any produce under the name of “SHRIRAM CARTAP” which is deceptively similar to plaintiff’s trademark. This order was appealed by the respondents before the Delhi High court in Mukesh Khadaria vs DCM Shriram Consolidated Limited on 25 March, 2010. In the appeal the question before the High court was weather the order passed by the single judge in granting the interim injunction thereby restraining the Appellant’s from using the trademark SHRIRAM while marketing their plaster of Paris and passing off their goods as those of the respondent was justified or not. The court answered in affirmative and accordingly dismissed the appeal.
Apart from infringement, the issue of jurisdiction was also questioned in this case. The facts of the case are that DCM Shriram Consolidated Limited is the registered owner of the trademark Shriram and Shriram Nirman. DCM has been marketing a variety of products like fertilizers, chemicals, plastics, cement etc. under its registered trademark since decades. Apart from this DCM also deals in plaster of Paris under its brand name Shriram Nirman. The packages containing these goods bear a logo with blue, red and black stripes on a white background. According to DCM, the Appellant’s violated their trademark by marketing their plaster of Paris under the name and style of “Aggarwal Shriram” which is both visually and phonetically similar to DCM’s trademark. While upholding the infringement, the court laid down that, it is quite obvious from a visual comparison of the packaging of Appellants that they use “Shriram” which is the trademark of DCM. Though there are dissimilarities in the pictoral representation but the essence of the mark is Shriram which is the trademark of DCM. While discussing the concept of visual dissimilarity the court relied on some Supreme Court precedents like Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 Sc980 ,Heiz Italia Vs Dabur India Ltd.2007)6SCC1 and Cadilla Health care ltd. vs cedilla pharmaceuticals ltd. (2001) 5 SCC 73 wherein the court had held that the test to determine the similarity is to see whether a particular mark has gained acceptability in the market so as to create confusion among the buyers as to the nature of the product. The courts emphasized on the decision of Supreme Court in cedilla Health care case were Supreme Court in clear terms had said that, “The overall effect of the packaging has to be seen.... [The] mere fact that the respondents have time and again made small changes in their packaging is an attempt to continue to mislead the purchaser and to make it more difficult for the appellants to protect their mark, which the record shows has acquired an enviable reputation in the market which is sought to be exploited by the respondent." In the light of these cases, the court held Mukesh Khadaria liable for infringement of DCM’s trademark.
The plaintiff DCM has submitted that the mark Shriram has been adopted by the plaintiff as mark of respect of their predecessor Sir Lala Shriram. The plaintiff further submitted that he is the owner of" Shriram" trademarks in class 5 group like Shriram Cartap 4G, Shriram Gold, Shriram Ace and many others. The plaintiff is the user of the said trademark since 1960. With efforts and hard work, Shriram has generated a good reputation and goodwill. The plaintiffs have invested crores of money for promoting their brand. The Plaintiff has alleged that defendants, by using similar trade mark for some of their products have sabotaged the reputation and goodwill of plaintiffs. However, the defendants in their written statement have denied all the accusations stating that their trademark is not similar to plaintiff’s trademark in terms of style, colour and packaging and hence there could be no infringement. The defendants also challenged the maintainability of the suit of jurisdictional grounds and happening of subsequent events which include the registration of defendant’s trademark in 2011. The Court stated that the defendants have not informed the Trademark Office regarding the pendency of the interim order. The court further held that there is clear violation of the provisions including Section 11 as the identical prior registered trade mark of the plaintiff was not cited as a conflicting mark. This was held to be contrary to rule Rule-37 of the Trade Mark Rules, 2002 which provides as a duty of the registrar to examine the application by causing search of the previously pending and registered.
The court laid down the following: “By ignoring the mandatory provisions of the Act and granting registration to the defendants, it is clear that it is done with the malafide intention, in order to defeat the orders passed by the Court. The party cannot get a registration done in its favour without informing the Trade marks office about the interim orders passed by the Court. On the question of Jurisdiction the court said that at this stage the question of jurisdiction cannot be sustained and is hence dismissed”.
All we can say is that the decision has further cleared the intricacies of trademark infringement and the parties seeking trademark registration must provide trademark registry with all the necessary information pertaining to the trademark so as to avoid unnecessary litigations.
Author: Noushin Aarif
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