In case a party itself has applied for obtaining Trade mark registration, can he take plea of the Trademark being common to Trade?

Or in other words, whether defence of Publici Juris is available to a party , who it self applied for obtaining Trade mark application?

This was one of the issue before the Hon'ble High Court of Delhi in Appeal bearing No.FAO-IPD 23/2021 titled as Dhani Aggarwal Vs Mahesh Yadav.

This Appeal was filed by the Appellant whereby interim injunction application of the Appellant was allowed in part.

The subject matter Suit was filed by the Appellant on the basis of proprietary rights in the Trademark RAMU.

Suit was filed against use of Trademark RAMAA by the Respondent.

The Ld. Trial Court , after observing Trade Mark RAMU and RAMAA not to be similar, however was pleased to restrain the Respondent from using outer similar trade dress.

But the Ld. Trial Court also allowed the Respondent for using the inner packaging. It was this order, which was challenged by the Appellant/Plaintiff in the present Appeal.

The Court observed that though the Appellant's Label , but the dominant feature of the Appellant's Trademark/Label was RAMU , hence the word mark RAMU in the label is also equally worth of protection. Para 26.

Appellants goods were khurmani , munnakaa , but Respondents goods were Almod. Though the Appellant did not deal with Almond however competing products of the parties were held to be allied and cognate goods, being sold on the shape shop. Hence there was possibility of confusion. Para 29

Trademark of the Appellant i.e RAMU and Respondent's Trademark RTC RAMAA were held deceptively similar to each other. Para 38.

The Hon'ble Court rejected this argument of the Respondent that Appellant is not using the Trademark which is registered in its favour, hence is liable to be cancelled, on the ground that this ground has not been taken in the written statement. Para 49-50.

Word RAMU was held to be arbitrary in relation to Appellant's products i.e. dry products. Para 53

As the Respondent itself has applied for Trademark registration for trademark RAMAA hence the same is estopped from alleging the trade mark of Appellant i.e. RAMU to be publici juris. Para 53

The Court has reiterated this law in the ground that when a party itself asserts trade mark right by applying for Trademark , then he can not take contrary plea of the trademark being common to trade.

Accordingly the subject matter Appeal was allowed and the Respondents were restrained from using the impugned Trademark RAMAA.

Case Law Discussed:
Dhani Aggarwal Vs Mahesh Yadav
Case No.FAO-IPD 23/2021
Delhi High Court
Navin Chawla, H.J.
Order Date: 22.08.2022

Written By:Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi
Email: [email protected], 9990389539