The Delhi High Court has reiterated that the use of the infringing mark in the form of a translation (same trademark but in a different language) or its transliteration, amounts to infringement. The Court in this regard observed that as per Section 29(9) of the Trade Marks Act, where the distinctive element of a registered trade mark consists of or include words, the trademark may be infringed by the spoken use of those words. Submission of the Defendant that as the mark was being affixed in Arabic language, there shall be no infringement, was thus not accepted by the Court.
Further, the High Court in its decision in the case of New Bharat Overseas v. Kian Agro Processing Pvt. Ltd. answered in affirmative the question as to whether affixation of the mark for the purposes of export would amount to ‘use in the course of trade’ under Section 56 of the Trade Marks Act. Madras High Court decision in the case of Crompton Greaves Limited, as relied upon by the Defendant, was distinguished on facts while the Court observed that even in that decision, the Court had held that the affixation of a trademark for purpose of export of goods would amount to its user in terms of Section 29(6).
Contention that Section 29(6) would not apply as the Defendant No. 4 (the foreign importer) was neither importing goods into India nor exporting the same from India, was also rejected by the Court while it observed that merely because the Defendant No.4 was the recipient of the said rice, said fact cannot come to the aid of the Defendant No.1 who was seeking to export rice with the impugned trademark registered in the name of the plaintiff.
Similarly, the plea of honest concurrent user did not prima facie impress the Court while it observed that while applying for the registration of the mark in Saudi Arabia, the Defendant no.4 was well-aware of the claim of the right in the said trademark by the plaintiff. The Plaintiff was also held to not have acquiesced its rights in the export of rice with the impugned trademark ‘TAJ MAHAL’ to the Defendant No.4. In respect of supply of rice by the Plaintiff to the Defendant No. 4 under the impugned mark, the Court was of the view that merely because the packaging of rice was in a manner approved by the Defendant No.4, it does not mean that the plaintiff also accedes to the right of the Defendant No.4 in the mark.
Granting ad-interim injunction in favour of the Plaintiff, the Court in its decision dated 23 December restrained the Defendant from affixing the mark ‘Taj Mahal’ for the purposes of selling or marketing rice in India or for exports.