Only talk doesn’t cook the rice! Rice, a source of a number of culinary delights, especially in India, is now the fodder for a legal battle. A trademark dispute over the use of the mark ‘Heritage’ with respect to rice is unfurling before the Delhi High Court. The plaint was first rejected by a single judge but was recently restored.
In 2011, LT Foods ltd filed a suit seeking permanent injunction to restrain Heritage Foods from infringing its trademark- Heritage.
LT Foods sells rice under various brands such as DAAWAT, SONA, HERITAGE etc. LTFL states that it adopted the trademark Heritage in 1997 which has since been extensively used in India and outside. They have also obtained registration for the mark Heritage.
The defendant- Heritage Foods is in the business of selling dairy, agriculture and retail; its retail outlets are called ‘Heritage Fresh’. Heritage also holds trademark registration for the mark Heritage in various classes including rice.
In 2011, Heritage Foods sent a cease and desist notice to LT Foods asking them to stop using the mark Heritage as it would cause confusion to the public and would amount to LT Foods passing off their rice as that of the defendant’s. However, the plaintiff claims that the defendant buys Heritage branded rice from their distributors and then reselling it as their rice under the brand Heritage.
LT Foods filed a petition before the IPAB against Heritage Foods’ trademark registration.
LT Foods also instituted a suit for infringement and passing off before a Single Judge of the D
elhi High Court seeking permanent injunction to restrain the defendant. However, the court returned the plaint. On infringement, the court stated that since both the plaintiff and defendant held registrations for an identical mark no suit for infringement could lie as per S. 28(3)– “(3) Where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by anyone of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. “
On passing off, the court held that it did not have jurisdiction as it was not shown that the cause of action arose in Delhi.
A Division Bench, however, set aside the first part of the order with respect to infringement. Since the trademarks were being challenged before the IPAB, Section 124 which relates to stay of proceedings in an infringement suit, should have been considered by the single judge before returning the plaint.
In May, 2014, the Delhi High Court restored the plaint even with respect to the passing off action.
The defendant contended that since the present suit was composite suit – an infringement and passing off action, according to the decision of the Supreme Court in Paragon Rubber Industries (reported by us here) both causes of action should independently fall within the territorial jurisdiction of the court. In this case, they contended that the passing off action did not fall within the jurisdiction of the Delhi High Court.
The plaintiff, accepted the applicability of Paragon Rubber but contended that both causes of action fall within the jurisdiction of the Delhi High Court. This was because in the defendant had in its legal notice stated that their goods bearing the trade mark HERITAGE are sold/supplied directly or indirectly throughout the length and breadth of the country, which would include Delhi as well.
It is important to note that the Single Judge had cited certain precedents which held “that a mere statement in reply to a legal notice to assert reputation and goodwill in whole of the country does not ipso facto confer territorial jurisdiction on this Court.” (Haryana Milk Foods Ltd. v. Chambel Dairy Products)
The court, however, accepted plaintiff’s argument and held that prima facie the Delhi High Court has jurisdiction. Establishing and explaining the said statement was a matter to be taken up at trail.