INTRODUCTION 

The Delhi High Court, in its recent ruling, marked a critical step in defending Khandelwal Edible Oils Limited’s (herein referred to as Plaintiff) intellectual property rights, by granting an interim injunction to them in their trademark and copyright infringement case against Landsmill Agro Private Limited (herein referred to as defendant). With this step, the Court has ordered the defendant to cease all activities that infringe upon the Plaintiff’s intellectual property until further notice. This decision highlights the importance of preserving copyrights and trademarks and the courts’ dedication to defending the rights of owners of intellectual property.

SUMMARY OF THE CASE

The Plaintiff adopted and started using the trademark CHAKRA from April 1, 1997. The Plaintiff also had copyright registration over the packaging of edible oils of various kinds, including mustard oil, Kohlu mustard oil, agmark mustard oil, soya refined oil, vegetable refined oil, etc, The defendant, on the other hand, filed for the registration of its Trademark CHAKRA KOLHU in Class 29 for ―mustard oil, refined rice bran oil, refined soybean oil; processed oils for food. For the same, the Notice of Opposition was served to the defendant on 12 July 2021. But despite this opposition, the defendant continued with its practice of selling vegetable oil and other culinary oils under the brand ―CHAKRA KOLHU. Therefore, the plaintiff filed a trademark and copyright infringement suit against the Defendant for the unauthorized usage of the plaintiff’s mark and hence, praying for a permanent injunction prohibiting the defendant from using the marks CHAKRA KOLHU, CHAKRIKA, and CHAKRESH and similar packaging about edible oils.

ISSUES AT HAND:

  • Trademark Infringement– One of the main legal issues that was raised before the court was whether the defendant had infringed the right of the plaintiff pertaining to the use and adoption of the goods concern bearing the defendant’s mark CHAKRA KOLHU.
  • Copyright Infringement– Another significant issue was whether the packaging of the defendant’s edible oils concerning its style, print, colour scheme, and overall appearance resembled that of the plaintiff.
  • Descriptive word– Whether the word ‘CHAKRA’ is descriptive or not?

AVERMENTS

Plaintiff’s Contentions

While presenting its case before the Hon’ble Court, the plaintiff made three major arguments:

  1. Rightful proprietor of the said mark:The plaintiff contends that since 1997, the plaintiff has been selling edible oils under the mark CHAKRA. Hence, he is the rightful proprietor of the mark CHAKRA. The packaging of the plaintiff’s edible oils is likewise protected by copyright.
  1. Substantial similarity between the goods: Plaintiff’s marks and packaging and the Defendant’s CHAKRA KOLHU, CHAKRESH, and CHAKRIKA marks and packaging are remarkably similar in terms of style, print, colour scheme, and overall appearance. The use of comparable marks and packaging by Defendant is an infringement of trademark and copyright.
  1. Prior user doctrine:Moreover, the defendant has further acknowledged that it only applied for registration of the word mark CHAKRA KOLHU on 27 May 2021 which entitles the plaintiff to an injunction as a senior user of the same mark.

Defendant’s Contention

In response to the Plaintiff’s claims of trademark infringement, the Defendant contended the following:

  1. No question of Confusion among the consumers:As the defendant’s product is multigrain edible oil and the Plaintiff’s product is mustard oil, there is no possibility of confusion between the rival marks. As far as the mark CHAKRESH is concerned, the defendant claims that he has the legal right to use the mark because they have a valid registration for the mark “CHAKRESH” since 2017.
  2. Plaintiff’s mark not registrable:The defendant further argues that Plaintiff’s mark “CHAKRA” was not entitled to registration in the first place, as it describes an oil extraction process, which makes it a descriptive mark.
  3. Lack of evidence: There exists no proof that the plaintiff’s mark CHAKRA has acquired a secondary meaning that would entitle him to take the benefit of Section 9(1) of the Trade Marks Act. Several other users have used similar marks, some of which have been registered since 1990, indicating that no exclusivity can be claimed over a descriptive mark. Therefore, the Plaintiff cannot claim exclusivity over the “चक्र”/”CHAKRA” part of its mark, as it is common to the trade and lacks inherent distinctiveness.
  4. Protection under the clerical mistake:Finally, the defendant argued that the alleged admission in the rectification petition filed by the defendant against the plaintiff’s “CHAKRA” mark should not be taken out of context. He claims that a cut-and-paste mistake was to blame.

ANALYSIS

The plaintiff, who holds the registered trademark for the word mark “CHAKRA” in the edible oils under Class 29, is in a legal battle against the defendant for their use of the mark “CHAKRA KOLHU” in the same line of plaintiff’s. This striking similarity, combined with the fact that both marks are used for the same type of product, raises concern for potential confusion among consumers. The defendant’s decision to use a similar font and color scheme only adds to the risk of misinterpretation of the plaintiff’s mark.

The plaintiff holds copyright registrations for their labels about copyright infringement. The plaintiff’s label appears to have been imitated by the defendant, replicating the manner of printing, color scheme, and device of a wheel. This substantial similarity between the labels suggests a copyright violation. 

The defendant questions the legitimacy of the plaintiff’s trademark registration, claiming that “CHAKRA” is a descriptive mark which makes it ineligible for registration under the Trademarks Act. However, the defendant’s application for registration of the mark “CHAKRA KOLHU” undermines this statement. If “CHAKRA” is considered as descriptive in and of itself, then “CHAKRA KOLHU” would be even more descriptive. Moreover, the Trade Marks Act makes no mention of “descriptive” marks. The term “CHAKRA” refers to the process used to make the goods rather than any characteristics of the edible oil. Consequently, it does not fall under the proscription of Section 9(1)(b) of the Trade Marks Act. The court found that the plaintiff cannot monopolize all Hindi terms beginning with “चक्र” only because they registered the mark “CHAKRA.” In this instance, the marks “CHAKRIKA” and “CHAKRESH” do not prima facie infringe the plaintiff’s registered mark “CHAKRA.” Furthermore, the plaintiff admits that they were unaware of the defendant’s use of the mark “CHAKRIKA,” and without proof of its usage, no injunction can be granted for that mark.” Therefore, the plaintiff is entitled to an injunction prohibiting the defendant from using the marks “CHAKRA KOHLU,” but not “CHAKRIKA” or “CHAKRESH.”

CONCLUSION

In conclusion, the court observed that the Defendant failed to establish that the conflicting mark CHAKRA was common to trade, and found that the defendant’s marks and goods were deceptively similar, which constitutes infringement. The Court mentioned that for a mark to get protection under the Trademarks and Copyright Act, should describe the qualities of its products and services, not the manufacturing method or process by which they are made. The Court further noted that Defendant had previously asserted the resemblance of the rival marks in a cancellation action against Plaintiff’s registration. Additionally, the Court discovered significant similarities in the labels, which strengthened the copyright infringement claim. Therefore, the Court held that the Plaintiff’s rights to the CHAKRA mark were violated by the Defendant’s CHAKRA KOLHU mark. However, the other marks, CHAKRESH and CHAKRIKA, were not found identical to the Plaintiff’s mark. Consequently, Defendant was prohibited from using the CHAKRA mark by an interim order granted by the Court in favor of Plaintiff.

Author: Ms. Akansha Sharma, pursuing BBA LLB from Amity University Madhya Pradesh.