* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved On: 12th October, 2011
Judgment Delivered On: 17th October, 2011
+ FAO(OS) 109/2011
BHOLE BABA MILK FOOD INDUSTRIES LTD....Appellant
Through: Mr.Mohan Vidhani, Mr.Rahul
Vidhani & Mr.Mihir Malhotra,
Advocates.
versus
PARUL FOOD SPECIALITIES PVT. LTD. .....Respondent
Through: Mr.Sandeep Sethi, Senior
Advocate with Mr.H.P.Singh,
Mr.Navroop Singh &
Mr.S.P.Kaushal, Advocates.
CORAM:
HON'BLE MR. JUSTICE PRADEEP NANDRAJOG
HON'BLE MR. JUSTICE SUNIL GAUR
1. Whether the Reporters of local papers may be allowed
to see the judgment?
2. To be referred to Reporter or not?
3. Whether the judgment should be reported in the Digest?
PRADEEP NANDRAJOG, J.
1. Vide impugned order dated 19.1.2011, while
restraining the defendant/respondent from selling „Ghee‟
using the trademark „KRISHNA‟ but permitting sale with the
label having words “PARUL‟S” and „LORD‟ i.e. to read
“PARUL‟S LORD KRISHNA”; all 3 words having same font and
prominence and not that the words “PARUL‟S” and „LORD‟
having a font so small that only the word „KRISHNA‟ catches
(the eye due to its prominence), application filed by the
FAO(OS) 109/2011 Page 1 of 7
appellant/plaintiff for interim injunction pending disposal of
the suit has been disposed of by the learned Single Judge.
2. The appellant asserts that it has been in the business
of manufacture and sale of ghee, milk and milk products
since the year 1992 and sales have risen from `47.29 crores
in the year 1997-1998 to `374.44 crores in the year 2008-
2009. Appellant asserts that it has obtained registration of
the label mark „KRISHNA‟ having pictorial reflection of Lord
Krishna standing on a lotus flower for dairy products falling
in Class-29 of the Trade Mark Act. It is the further claim of
the appellant that it is the registered proprietor of the word
„KRISHNA‟ written in a unique distinctive style where the
serif of the letter „K‟ extends beneath the letters „RISHNA‟ in
a curved manner and just after the letter „A‟ takes a loop in
the reverse above the word „KRISHNA‟ and as the loop
crosses the letter „K‟ it curves down and ends at the letter
„K‟ i.e. the pictorial representation is the word „KRISHNA‟
being encapsuled within a bean.
3. With reference to its sale figures, it is the case of the
appellant that the word „KRISHNA‟ has acquired a distinct
secondary meaning in relation to the milk product sold by it
and thus appellant alleges an infrangible proprietary
interest in the word „KRISHNA‟.
4. The defendant/respondent asserted that the word
„KRISHNA‟ is a common word and is the name of a Hindu
God who is associated with butter, milk and ghee and thus
assert that the appellant cannot claim any exclusivity in the
said word. That the word „KRISHNA‟ has acquired secondary
distinctiveness vis-Ã -vis the goods manufactured and sold
by the plaintiff/appellant has been negated. Alternatively it
is the case of the defendant that it is using the word
FAO(OS) 109/2011 Page 2 of 7
„KRISHNA‟ with 2 words prefixing the word „KRISHNA‟ being
the words „PARUL‟S‟ and „LORD‟.
5. For the purposes of an interim injunction pending trial,
the learned Single Judge has posed 3 questions, for
purposes of taking a prima facie view, being: (a) Whether
the trademark of the plaintiff has achieved secondary
distinctiveness of a kind which immediately brings to mind
the appellant’s product? (b) Whether the plaintiff could
monopolise a name ascribed to deity ‘KRISHNA’? And (c)
Whether a registration of a trademark obtained by a person
could be a subject matter of consideration in an action for
infringement of the trademark pending application filed
before the Registrar of Trademarks for cancellation thereof.
6. With regard of issue (c), the learned Single Judge has
held in favour of the defendant/respondent and we do not
discuss said issue as during arguments in the appeal said
aspect was not touched upon by learned counsel for the
appellant.
7. With regard to issue (a), the learned Single Judge
noted that in order to arrive at a conclusion whether or not a
mark has achieved secondary distinctiveness of a kind
which immediately brings to mind the product of the
proprietor of the mark, prima facie evidence has to be
brought wherefrom a view could be taken that the mark in
question reminds the consumer of the origin of the goods,
which would encompass material to prima facie opine of the
sufficiency of the distinctive secondary character acquired
by the mark.
8. The learned Single Judge, in para 14.4 of the impugned
order, has noted that several manufacturers of identical
goods have been using the word „KRISHNA‟ as a part of their
FAO(OS) 109/2011 Page 3 of 7
trademark and thus has opined that plaintiff‟s claim for
distinctiveness and hence monopoly was prima facie not
quite accurate.
9. The learned Single Judge has considered the decisions
cited where a common word was held as acquiring
secondary distinctiveness, and has rightly held that whether
a common word had acquired secondary distinctiveness is
primarily a question of fact.
10. With reference to the name of a deity, the learned
Single Judge has held that law would lean against a deity‟s
name being monopolized to the exclusion of the others.
11. Challenging the said opinion, prima facie found,
learned counsel for the appellant urged that the rising sale
figures of the plaintiff was determinative of the secondary
distinctive meaning acquired by the trademark in question
in relation to the goods in question.
12. We are in agreement with the view taken by the
learned Single Judge not only for the reasons given by the
learned Single Judge but the additional reason, as in the
instant case, a deity may be associated with a particular
kind of goods. It is common knowledge that Lord Krishna,
as a child, was known for his love of milk and butter and
thus Lord Krishna is closely linked with milk and butter and
this would certainly dilute a proprietary claim projected by
any person, in relation to Krishna with dairy products.
13. In a vast country like India where the population
exceeds 120 crore citizens, a sales figure of `300 crores per
annum would translate to less than `3/- per head per
annum. Not to be misunderstood that we are laying down
an empirical formula to be applied mathematically, with
reference to said illustration, we only wish to highlight that
FAO(OS) 109/2011 Page 4 of 7
the volume of sale has to be considered with reference to
the spectrum of consumers. For example, a product used
by only a few would require issue of distinctiveness to be
considered with reference to the sales keeping in view the
market span. It is the span of the market which determines
the secondary distinctive character acquired by a mark in
the field in question.
14. Just as the word „LOW ABSORB‟, an expression relating
to the character of the product, i.e. edible oil was held not
entitling the person to an exclusive use who first used the
said words, in the decision reported as 174 (2010) DLT 279
Marico Ltd. vs. Agro Tech Ltd., the adoption of the name of a
deity who is associated with a particular trait relating to
goods, in the instant case Lord Krishna having a trait which
has an association with milk and butter, would stand on the
same low footing for protection as would be purely
descriptive expressions pertaining to the subject product.
15. On the second question, the learned Single Judge has
referred to various decisions guiding as to when words or
part-words prefixing or suffixing a word in dispute would be
relevant on the subject of a monopoly to a word of common
origin.
16. The word „KRISHNA‟ was being used by the defendant
with the words „PARUL‟S LORD‟ preceding the word
„KRISHNA‟.
17. The learned Single Judge has rightly noted that the
small font of the words „PARUL‟S LORD‟ with prominence to
the word „KRISHNA‟ would disentitle the defendant to so sell
its product and thus has rightly directed the defendant to
print the words „PARUL‟S LORD‟ with the same prominence
as the word „KRISHNA‟. It has been correctly opined that
FAO(OS) 109/2011 Page 5 of 7
dairy product sold under the mark „KRISHNA‟ would not be
confused qua the source if the same product is sold under
the mark “PARUL‟S LORD KRISHNA”.
18. Since the stage is of forming a prima facie view, we
refrain from delving deep into the matter as evidence has
yet to be led, but would simply highlight that the
registration obtained by the appellant is not per-se to the
word „KRISHNA‟ but is to the word „KRISHNA‟ written in a
distinctive form : akin to a label. The distinctiveness in
which the word „KRISHNA‟ is written by the appellant is as
noted by us in para 2 above.
19. The distinctiveness to which the appellant can lay a
claim is to what it has got registered as a whole and such
registration cannot possibly give an exclusive statutory right
to the appellant qua a particular word of common origin.
The ratio of law in the decision reported as AIR 1955 SC 558
The Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd.
is squarely attracted.
20. Before terminating our decision, we would note the law
governing Appellate Jurisdiction pertaining to interlocutory
orders where a learned Single Judge has exercised a
discretionary power. In the decision reported as 1990 (2)
ALR 399 Wander Ltd. & Anr. vs. Antox India Pvt. Ltd., the
Supreme Court laid down the contours of Appellate
Jurisdiction in the following words:-
“…..the appeals before the Division Bench were
against the exercise of discretion by the Single
Judge. In such appeals, the appellate court will
not interfere with the exercise of discretion by
the Court of first instance and substitute its own
discretion except where the discretion has been
shown to have been exercised either arbitrarily,
or capriciously or perversely or where the CourtFAO(OS) 109/2011 Page 6 of 7
has ignored the settled principles of law
regulating grant or refusal of interlocutory
injunction. An appeal against exercise of
discretion is said to be an appeal on principle.”
(emphasis supplied)
21. Since we are agreeing with the view taken by the
learned Single Judge, we have reflected as above in a brief
manner, lest parties are prejudiced at the trial and needless
to state observations made by us herein above are tentative
and limited to what we need to observe and note at the
stage of interim relief. The final decision, post trial, would
obviously be with reference to the evidence led.
22. However, one direction needs to be issued. Which we
do.
23. The respondent would maintain an account of the
sales affected by it and would file the same if required to be
filed before the Court by the learned Single Judge.
24. Subject to the direction issued in para 22 above, the
appeal is dismissed.
25. No costs.
(PRADEEP NANDRAJOG)
JUDGE
(SUNIL GAUR)
JUDGE
OCTOBER 17, 2011
dk
FAO(OS) 109/2011 Page 7 of 7