The Delhi High Court in the case Khadi And Village Industries Commission v. Girdhar Industries And Anr observed and has refused to pass the interlocutory injunction order against two entities from using ‘Girdhar Khadi’ and ‘BR Khadi’ marks in a trademark suit filed by Khadi and Village Industries Commission.
The bench of Justice C Hari in the case observed and has directed the two manufacturers to maintain accounts of the manufacture, stock and sales of their products bearing the two marks and file accounts with the court every three months, pending disposal of the suit.
The bench of Justice Shankar clarified while passing an order dated December 26 during the winter vacations that the judgment shall take effect only on January 03, when the court will reopen.
The court in the case observed that there was no prima facie basis to hold that the registration of ‘Girdhar Khadi’ mark by Girdhar Industries, the defendant manufacturing soap bars and detergent powder, was invalid. Adding to it, the court stated that no case of passing off could prima facie lie against the said defendant either.
The court stated that there being no prima facie evidence, on record, of the plaintiff’s mark KHADI having acquired goodwill or reputation, for soaps, prior to 2001, from which date the defendants claim user of the GIRDHAR KHADI mark, or even prior to 2005, when the GIRDHAR KHADI mark was being registered in the favour of plaintiffs.
The court observed that the plaintiff, Khadi Industries, prima facie was unable to demonstrate goodwill and reputation commanded by the KHADI mark for soaps or detergents, prior to 2005, by which time at least the GIRDHAR KHADI mark was adopted by the Girdhar Industries.
The court stated that no prima facie case of passing off has, therefore, been made out by the plaintiff against the defendants.
The bench of Justice Shankar in the case obserevd and has ruled that the existence of pre-existing goodwill and reputation, prior to the commencement of user of the impugned marked by the defendant, is an indispensable sine qua non for a passing off action to legitimately lie.
The court stated that the terminus ad quem, by which date the plaintiff has to prove the acquisition of the requisite goodwill and reputation for a plea of passing off to succeed, is the date of commencement, by the defendant, of the rival mark and the Goodwill or reputation acquired by the plaintiff, in the asserted mark, after that date, is of no consequence.
It has been stated by the court that Khadi Industries’ assertion, that Girdhar Industries must have been aware of existing KHADI mark registration when it applied for registration of GIRDHAR KHADI mark in the same class, did not suffice to characterize the registration of latter’s mark as having been obtained in bad faith. Therefore, the court stated that in the absence of prima facie finding of invalidity of Defendant 1’s registration of the trade mark GIRDHAR KHADI, thus, no action for infringement of the mark can lie at the instance of the plaintiff, which is a later registrant of the mark KHADI.
Adding to it, the court stated that even if it were to be assumed that the defendants were using the BR KHADI mark, no prima facie case for injunction against such use can be said to exist in the plaintiff’s favour, as the findings hereinabove, apropos the GIRDHAR KHADI mark, would – except for the finding with regards to the suppression of fact – apply mutatis mutandis to the prayer for injuncting use of the BR KHADI mark as well. The counsel, Advocates Ms. Shwetasree Majumder, Ms. Diva Arora, Ms. Devyani Nath and Ms. Archita Nigam appeared for the Plaintiff.
The counsel, Advocates Mr. Shrawan Bansal and Mr. Kankaran Singh represented the defendants.
