India: Hajmola Succeeds: Delay And Concurrent Use Not A Ground For Interim Application Refusal

Last Updated: 30 October 2008

"Hajmola" a well-known trademark under Section 2(zg) of the Trade Marks Act, 1999 had moved against a deceptively similar mark "Rasmola" to the Trial Court. Having been granted an ex-parte injunction, an appeal was filed at the Delhi High Court challenging the order of the Trial Judge restraining them from using the mark "Rasmola" and in particular the suffix "Mola" with respect to digestive tablets, which was decided vide Pankaj Goel v. Dabur India Ltd. 2008 (38) PTC 49.

The High Court in the course of proceedings suggested that they would request the Single Judge to expeditiously dispose off the matter as any decision would take away the right to appeal from either party. Both the parties requested to decide the appeal on merits, since the Ld. Single Judge had not disposed neither the injunction application nor the plea for vacation of injunction, within thirty days, as a result of which the appeal was stated maintainable.

Goel contended that he has been using the mark Rasmola for digestive tablets since 1989 and that the suffix Mola was not an invented word, but common to the trade having over 25 marks using the same as a suffix having been registered. He also contended that three more suits against different marks using Mola as a suffix had been filed, to which Dabur had obtained no relief and that this fact had been suppressed. However, the court opined that a private settlement between the parties did not confer a license upon the whole world to infringe Hajmola. Further, it was contended that Dabur being aware of Rasmola in the market, was hit by the law of acquiescence and delay. Advertisements broadcasted on leading television channels were cited.

Counsels for Dabur elucidating the etymology of Hajmola, stated it to be a coined and invented word. The word was said to be distinctive and they were stated to be users of the same since 1972. They stated that at the time when Rasmola was adopted, Hajmola already had a turn-over of more than Rs. 8.50 Crores. Rendering statistics for the previous years, they plead to be a well-known mark. Further, they stated that the registration of Rasmola was of no consequence and that registration for the entire label had been obtained. They also asserted that the adoption of "Rasmola" was dishonest and no degree of being a user could cure that. It was further contended that no document showing the sales of Rasmola in the year 1989 were available. The invoices prior to 2004 were found to pertain to the predecessor-in-interest. It was also asserted that the sales figures promoted was the sum total of sales of eleven products. Speaking of the large volumes of advertisements aired, they contended that it was not possible for anyone; including Dabur to monitor all TV channels and that no knowledge can be attributed to any TV commercial of Goel. They stated that there was no cogent proof that Dabur knew about the infringing activities and took positive steps to encourage it. It was submitted that the plea of acquiescence or delay must fail.

The Court opined that an appeal in an ex-parte injunction lies only when the Single Judge within thirty days disposes off the application without assigning any reason. Here it was noted that Goel himself was not present when the application for vacation of injunction was taken up and that due to heavy workload and paucity of time the matter could not be disposed off. Taking into consideration precedents in such an instance, as also the aspect of alleged passing off, the Court ruled that Dabur was not barred by delay or laches or acquiescence. They stated that in view of the present facts, delay and so-called concurrent use could not be a ground to refuse an interim application. Stating the appeal to be devoid of merits, the High Court dismissed the same, ordering the Single Judge to expeditiously dispose off the matter within a period of six months.

© Lex Orbis 2008

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