In the case of Surya Food & Agro Ltd v Priya Gold Tea Company & Ors., Surya Food, the Plaintiff, brought a suit for permanent injunction and delivery-up, against Priya Gold Tea Company (Respondents) seeking to restrain them from:
- manufacturing, selling and/or offering for sale directly or indirectly dealing in Tea and/ or any other allied or cognate goods under the mark "PRIYAGOLD" or any other mark as may be identical and/or deceptively similar to Surya Food's trademark.
- using the slogan "MANGO HAQ SE" and from doing any other thing or act as may amount to passing off its goods and/or business as that of Surya Food's.
- using the mark "PRIYAGOLD" as part of their firm name amounting to passing off and infringement of copyright.
- using the trade mark "PRIYAGOLD" in respect of tea for infringement of Surya Food's well known trademark, or to do anything amounting to infringement of Surya Food's registered trade mark.
Surya Food & Agro Ltd is a limited company incorporated under the Indian Companies Act, engaged in the business of manufacturing and marketing various food items including biscuits, etc for the last several years. They alleged that the respondents had adopted a mark identical to their mark "PRIYAGOLD" in respect of tea, moreover, that the respondents were using the said mark as an essential part of their firm's name. It was further alleged that such adoption by the respondents is dishonest, mala fide and tainted with the intention to trade on Surya Food's well established and hard earned goodwill. Furthermore, it was alleged that the respondents had gone a step further and had copied Surya Food's slogan "HAQ SE MAANGO" and were promoting their products under the slogan "MAANGO HAQ SE".
The Respondents did not enter an appearance, thus vide Order dated 4.3.2008 the Court proceeded to adjudicate the matter ex parte, based on the evidence urged by Surya Food.
It was contended by Surya Food that the trade mark "PRIYAGOLD" was coined and adopted by them in the year 1993, and has been in use ever since and as a consequence, the said mark has come to be exclusively identified by the consumers with the plaintiffs goods. Furthermore, they claimed to have spent substantial amounts of money on advertising and promotion.
The Court observed that Surya Food's mark was a word mark and was not descriptive or suggestive of the products or services offered and that the mark "PRIYAGOLD" does not necessarily conjure up the image of biscuits. Further, the respondent's trade name was deceptively, or confusingly identical or similar to Surya Food's registered mark, and there was no explanation on the part of the respondents as to why they adopted the same mark. The Court further opined that the materials placed on record were sufficient to show that Surya Food had been using the mark since 1993, and the sales figures and turnover presented to the Court testified to some degree of their reputation and goodwill. The Court stated that the Respondents were marketing their product under the name M/s Priyagold Tea Company, and were as such using "PRIYAGOLD" as a significant part of the expression. The Court felt that by using the slogan "MAANGO HAQ SE" which was only slightly different form Surya Food's slogan "HAQ SE MAANGO", the Respondents were most certainly trading on Surya Food's goodwill and reputation. The Court further opined that the facts that the mark is a coined word and there being no evidence to show that the Respondents had hit upon the expression on their own meant that the respondents were indulging in infringement of Surya Food's trademark, with the attendant confusion.
Based on the grounds, the Court granted injunction to Surya Food and also awarded damages.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
