‘JAIN SHIKANJI’ TRADEMARK INFRINGEMENT CASE

Name of the case- Anubhav Jain v. Satish Kumar Jain

This case revolves around the dispute over the ownership of the trademark “JAIN SHIKANJI.”

The parties to the dispute belong to the same family. The Original suit was filed in 2008 by Swadesh Kumar Jain on the allegations that their father Parmatma Sharan Jain was carrying on the business of selling ‘Jain Shikanji’ and ‘Shikanji Powder’ for more than three decades under the name of “Jain Shikanji" near Police Station Modi Nagar District Ghaziabad. With time the brand "Jain Shikanji" became very popular and gained goodwill in the market. 

It was contended that several registrations were made by Satish Kumar Jain between 1996 and 2008 over the use of trademarks. Satish, in 2021, found that 'Jain Shikanji Private Ltd’ incorporated in 2019 was carrying similar business with the mark registered by him.

Mr. Satish Kumar Jain- Plaintiff/ Respondent

Mr. Anubhav Jain- Defendant/ Petitioner

FACTS OF THE CASE

On 23rd September 2021, Satish Kumar Jain (Plaintiff/Respondent, hereinafter) filed a commercial suit before the learned Commercial Court, Karkardooma, Delhi (“the learned Trial Court”, hereinafter) against Anubhav Jain (Defendant/ Petitioner, hereinafter), alleging that the way the mark “JAIN SHIKANJI” was being used by the defendant was same as the plaintiff’s registered mark “JAIN SHIKANJI”. Thereafter, in the same suit under Order XXXIX Rules 1 and 2 of the Civil Procedure Code, 1908.

On 5th November 2022, the learned Trial Court allowed the Respondent's application and passed an interlocutory injunction against the plaintiff. Aggrieved by the decision, the petitioner challenged the decision of the Trial Court.

The petitioner, thereafter, instituted a petition under Section 57 of the Trademarks Act, seeking cancellation of the registration granted to the trademark of the respondent and, consequent rectification of the trademark register.

QUESTION ON MAINTAINABILITY OF THE PETITION

The Respondent contended that the present petition is not maintainable as per Section 124 of the Trademarks Act, 1999.

Section 124- Stay of proceedings where the validity of registration of the trademark is questioned, etc

          The above section applies in two cases- (1) where the validity of registration of the trademark is in question (2) a Suit alleging infringement of the trademark is pending before the Civil Court.

Respondent contended that according to Section 124 if a suit for infringement is filed and the defendant raises the plea of invalidity of the plaintiff’s mark then the defendant loses the right to independently invoke Section 57 of the Act to seek cancellation of registration and consequent rectification of the trade mark register.

Petitioner contended that for Section 124(1)(a) to be applicable, it is paramount for the petitioner to have pleaded in the suit the invalidity of the trademark of the plaintiff.

High Court observed that clause (ii) in Section 124 (1) states that if no proceedings for rectification of the register concerning the trademark of either of the parties in the suit are pending before the Registrar of Trademarks, and the trial court is satisfied that the plea related to the invalidity of the registration, as raised in the suit is, prima facie, tenable, then:

1. The Court shall raise an issue regarding the validity of the contested trade mark; and
2. The Court shall adjourn the case for three months to enable the party assailing the validity of the contested trademark to apply to the High Court for rectification of the register.

Therefore, Section 124 will be applicable only in the instances enumerated below:

1. Plaintiff filed a suit against the defendant alleging infringement of the plaintiff's trademark;
2. Defendant raised a plea, of invalidity of the plaintiff’s trademark, in the same suit;
3. No proceedings, at that time, should be pending for rectification; and
4. The Trial court should be prima facie satisfied that the plea of invalidity is tenable.

Therefore, the High Court opined that the right under Section 124 is independent and should be available in addition to the right conferred by Section 57 and shall not be read in abrogation of Section 57 of the Act.

The High Court held that the petition is maintainable and that the rights to seek cancellation of a mark and rectification of the register, conferred by Sections 57 and 124(1)(ii), are independent of each other.

CONTENTION OF THE PETITIONER- Section 57 (Trade Marks Act, 1999)

The Petitioner contended that the impugned mark is liable to be taken off the Registrar of Trade Marks under section 57(1) and (2) read with Clause (a) of Section 9(1) of the Trade Marks Act, 1999, as the mark “Jain Shikanji” was merely a combination of common Hindu surname and a reference to the drink, and therefore, is not distinctive in nature.

The mark is a device mark

FINDINGS OF THE HIGH COURT

The High Court rejected the contention of the mark not being distinctive as the entitlement of a trademark to registration must be examined by viewing the mark as a whole.

The court held that the mark “JAIN SHIKANJI,” when seen as a whole, cannot be said to lack distinctiveness. The Court further stated that it is not common usage that the Hindu surname is used as a prefix in a trademark used for a drink.

Therefore, the plea of the petitioner, considering Section 9(1)(a) of the Trade Marks Act cannot sustain.

CONTENTION OF THE PETITIONER- Rule 25 (Trade Mark Rules, 2017)

The counsel of the petitioner abandon Section 57 completely and now, relied upon the technical deficiencies in the grant of registration to the respondent's impugned mark.

The Petitioner pointed out two contentions:

1. The Registrar accepted the plea of a user while granting registration of the impugned mark, with effect from 14th June 1996 to the respondent.
2. The registration granted by the Trade Mark Registry to the impugned mark also certifies its user since 14th June 1996.

Petitioner relied on Rule 25 of the Trade Marks Rules, 2017, according to which it is mandatory to require a user affidavit to be filed with every application seeking registration of a trademark, along with documents.

It was contended that the respondent did not file a user affidavit along with the application seeking registration of the impugned mark. It was noted that the same was filed only in response to the First Examination Report (FER) dated 17th December 2008. Also, no document was filed with the affidavit except a certificate of Chartered Account, certifying user, with effect from 2004.

FINDINGS OF THE HIGH COURT

The objection may not have substance as the application was filed in May 2008, and at that time the rules under Trade Mark Rules, 2002 were in force. It was noted that Rule 158 of the Trademark Rules, 2017 saves all the action taken under Trade Mark Rules 2002, before its enactment. Therefore, the respondent is not at fault for not having a user affidavit with his application.

CONTENTION OF THE PETITIONER- Certificate issued by Zila Parishad

The document of the Zila Parishad which was filed by the respondent is a mere receipt of money received from “Jain Shikanji, Kadrabad". Therefore, a such document cannot be taken as evidence user of the impugned mark from 1996.

FINDINGS OF THE HIGH COURT

The date of a user is an important aspect of any trademark registration especially, given Section 34 of the Trade Mark Act which accords precedence to the priority of the user. The Court was perplexed as to how the Registrar has, while granting registration of the impugned mark to the respondent, accepted the respondent's claim of the user since 14th June 1996. Further, the Court stated that discrepancy in user claim was itself a matter which warranted further inquiry.

CONTENTION OF THE PETITIONER- Section 11 of Trade Marks Act,1999

In the First Examination Report, dated 17th December 2008, a certain objection under Section 11 of the Trade Marks Act,1999, was raised on the ground that the mark for which the registration is sought is deceptively like pre-existing marks. It was noted that no reply was filed by the respondent and filed merely a user affidavit.

FINDINGS OF THE HIGH COURT

Re-examination by the learned Registrar on two counts:

1. the objections raised under Section 11 of the Trade Mark Act, 1999, in the First Examination Report (FER) dated 17th December 2008, and
2. the date of a user of the impugned mark by the respondent

Till a decision is taken by the learned Registrar, the respondent shall be entitled to continue to use the registered trademark as granted to him but shall not exceed such right to any judicial proceedings which may be pending.

INTERIM ORDER PLEA DISMISSED

The Delhi High Court dismissed a plea against Trial Court’s interim order. The division bench of Justice Manmohan and Justice Saurabh Banerjee was hearing an appeal moved by Jain Shikanji Private Ltd, challenging November 2022 interim order.

High Court dismissed the appeal and held,

"Discernment of an appeal at the appellate stage given the settled position of law…of the CPC leads us to conclude that the appellant has been unable to make out a case for interference by this Court. Hence, taking into consideration the overall factual and legal aspects involved herein and the overall conduct of the appellant, this court finds no merit in the present appeal.”

Lastly, the High Court stated that at the "end of the day what has been appealed is an interim order" of the trial court and not a final order, and unless there is some "arbitrariness, perversity or capriciousness" in the interim order the scope of interference by the appellate forum is "extremely minimal".

TIMELINE – JAIN SHIKANJI TRADEMARK INFRINGEMENT CASE
 

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