R.N. Bhagat and Ors. vs. Bhagat Marketing Corp. and Ors.

R.N. Bhagat and Ors. vs. Bhagat Marketing Corp. and Ors.

Citation: 2007 (35) PTC 571 (GUJ)

Decided on: 05.02.2007

 

Ratio Decidendi:

“Passing off is a recurring wrong and such wrong can be prevented at any time.”

“Delay itself may not be a sole ground for refusing injunction, if it is found that the Applicants have achieved distinctive goodwill in the trademark and they are prior in market.”

 

Facts of the Case:

 

That Grandfather of the plaintiffs, one Mr Somabhai Ishwarbhai Patel had started the business of manufacturing and selling ‘Dhana ni Dal’ in Gujarat. Late Shri Somabhai had four sons, namely, one Natwarlal Somabhai Bhagat, Premanand Somabhai Bhagat, Navinbhai Somabhai Bhagat and Dahyabhai Somabhai Bhagat. Out of which, Navinbhai Somabhai Bhagat has retired from family business somewhere in the year 1963 and defendant No. 2 is the son of said Navinbhai Bhagat. Rest of the brothers along with their sons established a firm, viz., M/s. Bhagat Marketing Corporation, wherein ‘Dhana ni Dal’ was packed in sachet pouches and sold under a trade name ‘BHAGAT’. The plaintiffs have applied for registration of the trade mark 536230 and 668188 in Class 30 on 31st August 1990 and 5th June 1995. As per the prima facie evidence on record, the plaintiffs have incurred large advertisement expenditure from 1991 onwards. The total sales of various products of the plaintiffs have also increased from 1991 onwards. As per the chart at page 5 and 6 of the plaint, aforesaid aspect regarding advertisement expenditure as well as total sales starting from 1991 is not in dispute. Considering the prima facie evidence on record, it can be presumed that word ‘BHAGAT’ has acquired distinctiveness being closely associated with trading name and trading style of plaintiff No. 1 firm. Plaintiffs have also produced xerox copy of the registered trademarks of the plaintiffs bearing No. 536230 along with its renewal as well as registration No. 668188 with its renewal. Xerox copy of the registered trade mark of the defendants bearing No. 1337837 is also produced on record. It has been pointed out to the Court by Mr.V.B.Patel that as per the letter written on behalf of the original plaintiffs to Navinbhai Somabhai Bhagat, dated 25-4-1982, wherein a grievance was made by the plaintiffs that Navinbhai Somabhai Patel (defendant) is putting mark ‘Supreme Bhagat Dhana ni Dal’ and ‘Supreme Bhagat Variyali’ on the bags and a request was made to delete the word ‘Bhagat’. Said letter was produced before the trial Court and it is also produced before this Court. Relying upon said letter, it is argued by Mr.V.B.Patel that prima facie, it would show that the defendants are in market since 1982 and the plaintiffs have allowed defendants to continue to do business in said trade name and style, namely, ‘Supreme Bhagat Dhana ni Dal’ and ‘Supreme Bhagat Variyali’.

 

Issues:

  1. The question which requires consideration is who is the prior user of the word ‘Bhagat’?

 

  1. Whether there is any likelihood that by using said word ‘Bhagat’ the defendants may pass off the goods of the plaintiffs?

 

  1. Whether the customers are likely to be deceived by use of the word ‘Bhagat’?

 

  1. Whether the injunction application of the plaintiffs is required to be rejected on the ground of delay and latches or acquiescence.

 

Judgment:

The plaintiffs have prima facie established that they are prior users and even if it is assumed that the defendants are in business since 1994, the fact remains that the plaintiffs have started their business since 1990. Chart about the advertisement expenditure and sales produced by the plaintiffs, prima facie, show that the plaintiffs have achieved goodwill in the market and there is nothing to show that they have allowed the defendants to continue the business, on the contrary, letter dated 25-4-1982, prima facie, suggest that the plaintiffs have objected by writing that letter to the defendants that the defendant should not use the word ‘Bhagat’ as it is likely to create confusion. Therefore, this is not a case in which the plaintiffs have agreed or permitted the defendants to continue their business by using the word ‘Bhagat’ in connection with their product. There is nothing to show that the defendants continuously using word ‘BHAGAT’ in their business for all these years.

 

It is clear that the plaintiffs are prior user of trade name ‘BHAGAT’ and a suit in connection with passing off action is maintainable even against registered trade mark owner as, ultimately, the object is to protect the interest of the consumer to see that they are not confused. In a given case, delay itself may not be a sole ground for refusing injunction, if it is found that the plaintiffs have achieved distinctive goodwill and they are prior in market. However, it is true that, no weightage can be given to the say of the defendants before the Income Tax authority that he is not doing business etc., and some other circumstances are also required to be taken into account. Considering the material on record, it is clearly established that the plaintiffs have got two registered trademarks for which they are complaining infringement on the part of the defendants. So far as defendant’s registered trade mark No. 1337837 is concerned, a rectification application is preferred by the plaintiffs and, prima facie, evidence on record show that the plaintiffs are able to make out their case in connection with passing of with regard to that trade mark.

 

Considering the fact that plaintiffs and defendants are family members and considering the fact that, initially, the trial Court had granted injunction without notice to the defendants and since it is the case of the defendants that, the defendants were using word ‘BHAGAT’ in their business for quite some time, in my view, while confirming injunction of the trial Court by restraining the defendants from using the word ‘BHAGAT’ in its business, service, goods, products including all types of ‘Dhana ni Dal’ and allied products falling under the Trade Marks Act, the defendants are permitted to clear up existing material with a clear understanding that, thereafter, they will not carry out their business by using the word ‘BHAGAT’ as a trade name.