Ganesh Grains Limited     V/S     Shree Ganesh Besan Mill

02 Jul Ganesh Grains Limited     V/S     Shree Ganesh Besan Mill

As the design and get up of the packets of the respondent were deceptively similar and were used to market the same products as that of the appellants the respondents were restrained from using the word “Shree Ganesh”

The present suit is filed by the appellants Ganesh Grains Limited in the Honourable High Court of Calcutta before Honourable Justice Debangsu Basak, seeking interim protection in a suit for infringement of a registered design and passing off. [IA GA 1 of 2020 in CS 92 of 2020, Decided On: 15.03.2021]

The appellants have submitted that they are manufacturers, merchants and exporters of various flour products. The appellants had started the business of manufacturing and marketing of flour under the name and style of Ganesh Flour Mills and sold products under the mark “Ganesh” since 1936 and that they have built a strong presence in West Bengal and Eastern India in terms of market share, brand recognition and distribution. The appellants also submitted that, they were now having pan India presence. According to the appellants they have been in continuous and uninterrupted use of the trade mark “Ganesh” and the same has been registered in Class 30.

According to the appellant they became aware of the respondents using the word “Ganesh” to market the same products as that of the appellants in 2015. The appellants have drawn the attention of the Court to the fact that the respondents had applied six times for registration of the word “Ganesh”. The Registrar had disallowed three of such applications and the balance three had been rejected on the objections of the appellants.

The appellants have further highlighted the respondents’ conduct subsequent to the interim order dated January 4, 2021 and have submitted that, the respondents have adopted a dishonest approach. According to the appellants the respondents have sought to change the label although, in actual effect, they are seeking to ride on the business goodwill of the appellants’ despite the so called changes. According to the appellants, the respondents are still using the word “Ganesh” on a new format which is also misleading and deceptively similar to that used by the appellants. Hence the appellants have filed the present suit for infringement of a registered design and passing off.

According to the respondents in the case, they are entitled to use the word “Ganesh” since, the father of one of the partners of the partnership firm has the name Shree Ganeshlal Daryani. According to the respondents, Late Shree Ganeshlal Daryani had adopted the trademark “Shree Ganesh” honestly and bona fide. Such adoption being honest and bona fide, is protected under Section 35 of the Trade Marks Act, 1999. The respondents have further submitted that they have been using the mark “Shree Ganesh” since 1989 and the appellants have not taken any steps to prevent them from using the mark “Shree Ganesh”. The appellants had allowed the respondents to grow and at this stage, the appellants cannot have an order of injunction restraining the respondents from carrying on business as the same will impact not only the respondents but also their workers.

The court in the present case stated that Section 35 of the Trademarks Act of 1999 has protected the bona fide use of a trademark by a person of his own name or that of his place of his business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services. In the facts of the present case, “Shree Ganesh” has never been the name of a person or the predecessor in business of the respondents. “Shree Ganesh” cannot be said to be the bona fide use of his own name of Shree Ganeshlal Daryani. The respondents are a partnership firm under the name and style of M/s. Shree Ganesh Besan Mill. The name of the partnership firm is a pseudo name and is not that of Shree Ganeshlal Daryani. Thus neither the words “Shree Ganesh” nor Shree Ganesh Besan Mill can be said to be protected under Section 35 of the Act of 1999.

According to the court the appellants had made out a prima facie case on account of infringement of registered trademark as also on the ground of passing off. The respondents had used the registered design of the appellants. Further the appellants and the respondents were in the same class of business. The court asserted that the description of “Shree Ganesh” as appearing in the packets and labels of the products of the respondents’ showed that, the word “Shree” had been used in a manner so as to camouflage itself in the design of the label and the word “Ganesh” had been used prominently. The court concluded that the design, get up of the labels and packets of the respondents’ used to market the same products as that of the appellants were deceptively similar and the respondents appeared to be trying to ride on the business reputation of the appellants through such means.

Thus according to the court the respondents cannot be said to be entitled to use the word “Shree Ganesh” in carrying on their business. However, the respondents were at liberty to carry on the business of flour, but without using the registered design “Ganesh” with a suffix or a prefix to market their products.

Acts/Rules/Orders: Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 1; Code of Civil Procedure, 1908 (CPC) – Order XXXIX Rule 2; Trade Marks Act, 1999 – Section 12, Trade Marks Act, 1999 – Section 29, Trade Marks Act, 1999 – Section 35

Cases Referred: Wander Ltd. and Ors. vs. Antox India P. Ltd. MANU/SC/0595/1990; Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd. and Ors. MANU/SC/0646/1994; Intex Technologies (India) Ltd. and Ors. vs. AZ Tech (India) and Ors. MANU/DE/0625/2017; Laxmikant V. Patel vs. Chetanbhat Shah and Ors. MANU/SC/0763/2001