Monday, November 1, 2010

A battle for ownership of word “Kamdhenu”

In Hindu mythology, Kamdhenu means a sacred cow that grants all wishes and desires. She is associated with plenty, even unending supply of goods, particularly food. Kamdhenu emerged from Samudramanthan (the churning of the ocean) and was taken by seven gods. Kamdhenu is a divine cow who is believed to be the mother of all cows. Like her daughter Nandini, she could grant any wish for the true seeker. Kamdhenu provided Vasishta with his needs for the sacrifices. So in that Yug rishiVasishta was the owner of Kamdhenu.

But in Kalyug, disputes aroused in Capital of India before the Hon’ble High Court of Delhi regarding the ownership of the word “Kamdhenu”. We are presenting the issue, facts and the decision of the Court as follow..

M/s Kamdhenu Ispat Limited (plaintiff) is a company incorporated under the Indian Companies Act. Its main business is to manufacture and market Steel Bars and other cognate products. It has also expanded into other businesses such as Cement, POP, construction, etc.

M/s Kamadhenu Pickles and Spices (Defendant) is a company under the Partnership Act. Its main business is manufacture and retail sales of pickles, spices, jellies, juices, sauces, and processing articles and condiments used for the preparation of those goods.

The plaintiff has claimed the registered proprietor of a well-known mark “KAMADHENU in respect of steel bars (or sariyas), promoted and advertised, under the Trademark Act. Plaintiff sought for permanent injunction & other relief, alleging infringement and passing- off, of their trademark "KAMADHENU" by the defendant.

Plaintiff was represented by Mr. Pankaj Kumar, Advocate and defendant was represented by Mr.Sh. S.P. Vijayaragavan, Advocate in High Court of Delhi. The decision was pronounced by Hon’ble Justice, S.Ravindra Bhat on 18.10.2010 (Decision here).We are presenting the case in brief as follows…

Plaintiff points;

1. The plaintiff submitted that Delhi High Court has jurisdiction since the plaintiff office operates in Delhi and its goods are extensively sold here.

2. The plaintiff claims being the registered proprietor of a well-known mark (falling within the definition under Section 2(1)(zg) of the Trademarks Act, 1999)(hereafter called "the Act"). Since the mark has been used extensively for over a considerable period of time, and is almost a household mark, in respect of steel bars (or sariyas), promoted and advertised, their products widely under the said mark through advertisement media.

3. It is submitted that though the mark is used in connection with steel bars, and cement, etc, its reputation in India has acquired such a degree of distinctiveness and fame, that use of KAMADHENU by any other trader, in respect of diverse goods, would tarnish its (the plaintiff's) reputation and injure its reputation.

4. The plaintiffs' contented that “KAMADHENU” is not descriptive, but arbitrary, and by long usage, it has not only acquired secondary significance, but has become a well known mark in respect of its goods and products.

5. The plaintiffs alleged that the defendant despite being aware fame and reputation in respect of the mark "KAMADHENU" is engaged in the manufacture and export of bed sheets, quilts and pillow covers in various specifications by using of such mark is in bad faith & deriving benefits from the plaintiffs' trademark.

Evidences produced by plaintiff:

(i)Copies of trademark certificates, with effect from 1996, 1999, 2004 and 2005

(ii) Bills and invoices towards sale of its products, commencing from 1998 till the date of filing the suit

(iii)Copies of its annual reports for various years from 1996 to 2006 and for subsequent years, when it had increased considerably.

The defendants submitted that;

1. It has no intention of deriving benefits from the plaintiffs' trade name, and it has been using “KAMADHENU” ever since 1969.

2. The goods and products sold or marketed by them all these years has no remote connection with the plaintiff's main business or the products sold or marketed by it under the KAMADHENU mark.

Evidence Produced by defendant;

(i)Copies of the registration and approval certificates, which show the use of “KAMADHENU” as trademark, since 1995. They have been using that term as trademark, and trading or corporate name, since 1986.

(ii)The registration of the company, and its certificate of incorporation and other such documents are relied upon for this purpose.

Points on which decision relies;

The materials on record show that the plaintiff has been using the “KAMADHENU” mark for a considerably long period in relation to steel bars and it has acquired a secondary significance to identify itself with the plaintiff. To that extent, the plaintiffs' claim is correct.

The meaning of Kamadhenu in Hindu mythology is a “sacred cow that grants all wishes and desires”. She is associated with plenty, even unending supply of goods, particularly food. Kamadhenu emerged from Samudramanthan (the churning of the ocean) and was taken by seven gods. She is also known as the mother of all cows. As “KAMADHENU” is a dictionary word therefore the principle of common to trade is applicable in this situation.

There is no doubt that KAMADHENU is not a descriptive word, in respect of the goods or services offered by the plaintiff.

The plaintiff has been unable to show from the record any evidence that whether

(i) It is engaged in any textile goods manufacture ( i.e. bed and table covers) or

(ii) Its use of the KAMADHENU mark in relation to pickles or such packaged foods the kind, which is the only commercial activity of the defendant.

Hon’ble justice S.Ravindra Bhat, Delhi High Court, is of the opinion that the use of “KAMADHENU” as a corporate name by the defendant, notwithstanding the plaintiff's registration of the word mark, cannot ipso facto confer exclusivity. The plaintiffs should use it in relation to specific goods such as pickles and condiments etc (by the defendants) then only there would be any justification for granting relief. Trademark law does not imply formalistic or ritualistic application of abstract principles.

As far as the claim for dilution, a species of infringement under Section 29 (4) is concerned, the trademark owner has to show four distinct elements as follows;

(1) The impugned mark is identical or similar to the senior mark;

(2) The senior or injured mark has a reputation in India;

(3) The use of the impugned mark is without due cause;

(4) The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or repute of the registered trade mark.

The plaintiff's reputation in its mark may at best be said to contain an association with steel and allied goods, even in somewhat related fields such as cement. However there is nothing suggestive that such association extends to pickles and such like packaged products manufactured and sold by the defendants. This aspect is crucial, because the plaintiff does not deny that it is not selling competing goods.

The class of users of the plaintiff’s goods is not the kind who would associate the defendant's mark as those of the plaintiff's. Taking into consideration all these factors and the materials on record, the court is satisfied that there is no linkage between the defendant's mark and the plaintiffs' products, so as to cause detriment to the latter and undue advantage to the former.

For the above reasons, the plaintiff has not been able establish the case for either infringement by dilution or of the corporate name, by the defendant; the suit itself does not disclose any cause of action, for any of the reliefs claimed. The suit and pending applications were rejected in the above circumstances.

1 comment:

Hari Mohan said...

To me it's a clear 'open and shut' case. When the classes under which the marks are registered are different, there is no substantial ground to pursue the case. It's evident from the case that KIL's counsel misleaded them brazenly.