HC restrains Oil Company from using trademark of other firm
Bombay HC restrained an edible oil company from using trademark ‘RISO-LITE’ for its rice bran oil on the ground that it appears identical to or is deceptively similar to trademark ‘RISO’ of another company
Mumbai: The Bombay High Court has restrained an edible oil company from using trademark ‘RISO-LITE’ for its rice bran oil on the ground that it appears identical to or is deceptively similar to trademark ‘RISO’ of another company.
The order was passed recently by Justice S J Kathawala in a suit filed by Kamani Oil Industries against Bhuvaneshwar Refineries in a case of alleged infringement of its trademark.
The injunction issued to Bhuvaneshwar Refineries on using the impugned trademark ‘RISO-LITE’ would be in force until the suit is finally disposed of, the judge ruled.
The court expedited the hearing of the suit and asked the defendants to file their written statement on or before June 9. Issues would be framed on June 13.
The judges held that the plaintiff has prima facie proved that the said mark ‘RISO’ was honestly and concurrently adopted by them.
The plaintiff said it had acquired registration of the trademark ‘RISO’ on July 27, 2012, and that this registration is valid, subsisting and in force. It also argued that the impugned trademark ‘RISO-LITE’ of the defendant was deceptively similar to its mark ‘RISO’.
Bhuvaneshwar Refineries argued that ‘RISO’ was an Italian name for rice and hence it was descriptive in nature and can be freely used by anyone.
“It is true that certain words are often borrowed from a foreign language and commonly used in India. However, ‘RISO’ is not one such word which is commonly used in India, and cannot be held as descriptive in the Indian context.
“Therefore, there is a possibility that people buying these products may not be well versed with the Italian meaning of the word ‘RISO’ and therefore it cannot be said that the said mark ‘RISO’ is descriptive in nature”, Kathawala said.
“Thus I am of the prima facie view that the said disclaimer on the registration of the plaintiff’s mark does not apply to the word ‘RISO’ in the present case,” the judge said.
The defendant contended that the plaintiff has not honestly adopted and conceived the said trademark ‘RISO’ since there were other marks, already using the word ‘RISO’, exists in the market, namely “RISO’NA” and “RISO’LA”.
The defendant argued that the plaintiff was not entitled to seek the relief against the alleged infringement or passing off the goods when the plaintiff itself has committed the act of infringement.
However, the court held that the defendant in the present case has not been able to show that the prior marks ‘RISO’NA’ or ‘RISOLA’ have actually been used or that they have a reputation or market of their own, which the plaintiff by their mark of ‘RISO’ is infringing upon. “Therefore, I am not inclined to agree with the Defendant in respect of this contention”, the judge said.
The defendant also contended that the Registrar of Trade Marks had imposed a disclaimer on the registration of the plaintiff’s mark viz., “registration of this trade mark shall give no right to the exclusive use of the descriptive matters”.
However, the plaintiff contended that the disclaimer does not restrict their rights to the exclusive usage of the word ‘RISO’ and the proprietor of a disclaimed word can still maintain an action for passing off whilst placing reliance on the judgment of the Supreme Court in the case of Registrar of Trade Marks v/s Ashok Chandra Rakhit.
In this judgement, it was held that “the disclaimer is only for the purposes of the Act. It does not affect rights of the proprietor except such as arising out of registration.
That is to say, the special advantages which the Act gives to the proprietor by reason of registration of his trade mark do not extend to parts or matters which he disclaims. Disclaimer does not affect those rights in any way.”