PARAKH VANIJYA PRIVATE LIMITEDversusBAROMA AGRO PRODUCT AND OTHERS

                         [2018] 6 S.C.R. 967                             967


             PARAKH VANIJYA PRIVATE LIMITED                              A
                                  v.
           BAROMA AGRO PRODUCT AND OTHERS
                   (Civil Appeal No. 6642 of 2018)
                                                                         B
                           JULY 12, 2018
        [RANJAN GOGOI AND R. BANUMATHI, JJ.]
       Trademark – Appellant sold special Biryani Rice under the
mark “MALABAR”– Suit filed by appellant against respondents for          C
infringement and passing off special Biryani Rice under the mark
‘MALABAR GOLD’ or other mark deceptively similar to ‘MALABAR’
– High Court held that the respondents were entitled to use the
word ‘MALABAR’ in conjunction with ‘BAROMA’ with modifications,
for selling its Biryani Rice – On appeal, held: Though, appellant is
the registered owner of the label mark in Class-30, however, in the      D
said registration u/Class-30, there is a disclaimer to the exclusive
use of the word ‘MALABAR’ in terms whereof the appellant has no
right over the exclusive use of the word ‘MALABAR’ – High Court
rightly held that the appellant cannot claim exclusive right over the
use of the word ‘MALABAR’ – Further, on comparing the label mark         E
of the appellant selling Biryani Rice with word ‘MALABAR’ and the
modified label mark of the respondents, there is no similarity between
the two label marks – Impugned order not interfered with.
      Dismissing the appeal, the Court
                                                                         F
       HELD: 1.1 The appellant is the registered owner of the
label mark in Class-30 in respect of rice, flour and preparations
made from cereals, bread, cakes, biscuits, pastry and spices.
Class-30 of the classification of goods and services under the
statute covers diverse spices and other edible materials as wheat,
rice, coffee, tea etc. In the registration under Class-30, there is a    G
disclaimer for the word ‘MALABAR’. The appellant though claims
exclusive right over the word ‘MALABAR’ since there is a
disclaimer to the exclusive use of the word ‘MALABAR’, the
appellant has no right over the exclusive use of the word
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                                 967
968            SUPREME COURT REPORTS                      [2018] 6 S.C.R.


A     ‘MALABAR’. The respondents have also inter alia brought on
      record the materials to show the registration of other goods under
      Class-30 with the word ‘MALABAR MONSOON’ granted in
      favour of Amalgamated Bean Coffee Trading Company Limited
      for Coffee Cream, Coffee included in Class-30. The registration
      of the mark ‘MALABAR MONSOON’ under Class-30 also
B
      contains similar disclaimer of the word ‘MALABAR’. Likewise,
      the label ‘MALABAR COAST’ has been registered in Class-30
      for Coffee, Tea, Cocoa, Sugar etc. in favour of Tropical Retreats
      Private Limited which again contains a similar disclaimer for the
      exclusive use of the word ‘MALABAR COAST’. Having regard
C     to the materials placed on record, the High Court rightly held
      that the appellant cannot claim exclusive right over the use of
      the word ‘MALABAR’. [Paras 6, 7][970-C-D, F-H; 971-A]
            1.2 The label of the respondents containing the words
      “BAROMA”, “MALABAR”, “GOLD” are circled having a
D     different get-up from that of the appellant. By comparison of the
      two label marks, both appear to be substantially different. There
      appears to be no similarity between both the labels, more so,
      deceptive similarity. Keeping in view the interest of the
      respective parties who are having substantial turn-over in their
      respective business, the High Court rightly held that the
E
      respondents would be entitled to use the word ‘MALABAR’ in
      conjunction with ‘BAROMA’ with the different get-up as approved
      by the High Court. There is no serious infirmity warranting
      interference with the impugned order. [Para 8][971-B-D]
            CIVIL APPELLATE JURISDICTION: Civil Appeal No. 6642
F     of 2018.
            From the Judgment and Order dated 01.03.2017 of the High Court
      at Calcutta in A.P.O.T. No. 349 of 2016.
            Shyam Divan, Arvind Nayar, Gourab K. Banerji, Sr. Advs., Hemant
G     Daswani, P. S. Sudheer, Rishi Maheshwari, Bharat Sood,
      Sanjay K. Shandilya, Gautam Roy, Apoorva Agrawal, Saurav Jana,
      Abhishek Singh, Hemant Sharma, Mushtaq Ahmad, Sahil Tagotra, Ms.
      Manisha Singh, Advs. for the appearing parties.


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  PARAKH VANIJYA PRIVATE LIMITED v. BAROMA AGRO                               969
                     PRODUCT

      The Judgment of the Court was delivered by                              A
      R. BANUMATHI, J. 1. Leave granted.
       2. This appeal arises out of the order dated 01.03.2017 passed by
the High Court of Calcutta in AOPT No.349 of 2016 affirming the order
of the Single Judge in and by which it was held that the respondent-
defendant is entitled to use the word ‘MALABAR’ in conjunction with           B
the mark ‘BAROMA’ for selling its product - Biryani Rice. By the
impugned order, the Division Bench has also affirmed the findings of the
Single Judge that subject to the outcome of the suit, the respondents can
pursue their application for registration of their label.
       3. Appellant-plaintiff claims to have been using the mark              C
‘MALABAR’ for selling Biryani Rice from 2001. The appellant filed
the suit CS No.27 of 2012 for infringement and passing off special Biryani
Rice under the mark “MALABAR GOLD” or other mark/trade name
which is identical with and/or deceptively similar to the appellant’s trade
mark ‘MALABAR’. On consideration of various features of the                   D
respondent’s then mark and other materials, the learned Single Judge
vide order dated 02.07.2012 granted interim injunction observing that
there was similarity between the two labels/marks and restrained the
respondents/defendants from using the label mark ‘MALABAR’. The
Division Bench declined to interfere with the said order by its order
dated 14.09.2012.                                                             E

        4. While the suit and application for temporary injunction was
pending before the Single Judge, the respondents/defendants filed
application for vacating the order dated 02.07.2012 inter alia on various
grounds contending that the appellant is relying upon fabricated documents
and that the appellant cannot claim exclusive right over the mark             F
‘MALABAR’ and therefore, the interim order of injunction has to be
vacated. The learned Single Judge by its order dated 05.07.2016 which
was passed with the consent of the parties gave liberty to the respondents
to file a supplementary affidavit to clearly indicate the device/mark that
the respondents proposed to use. The respondents filed application            G
indicating the proposed modification in their label by changing the get-
up. After hearing the parties, the interim order of injunction initially
passed, was modified vide order dated 08.08.2016 to the effect that the
respondents shall be entitled to use the word ‘MALABAR’ in conjunction
with ‘BAROMA’ where all the words and letters must be in the same
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970             SUPREME COURT REPORTS                           [2018] 6 S.C.R.


A     font but the word ‘MALABAR’ may be increased with font size of not
      more than 25% than the rest of the words or letters. Being aggrieved,
      the appellant-plaintiff has preferred appeal before the Division Bench.
      The Division Bench dismissed the appeal by the impugned order holding
      that the Single Judge has passed the order balancing the interest of the
      parties who are having a substantial turn over in their respective business.
B
            5. We have heard Mr. Shyam Diwan, learned senior counsel
      appearing on behalf of the appellant and Mr. Gourab K. Banerji, learned
      senior counsel appearing on behalf of the respondents and perused the
      impugned order and considered the materials placed on record.
C            6. The appellant is the registered owner of the label mark in
      Class-30 in respect of rice, flour and preparations made from cereals,
      bread, cakes, biscuits, pastry and spices. The appellant sells Biryani
      Rice and the most prominent feature of its label mark is the word
      ‘MALABAR’. The appellant-plaintiff is granted registration in Class-
      30 for its products. Class-30 of the classification of goods and services
D     under the statute covers diverse spices and other edible materials as
      wheat, rice, coffee, tea etc. In the registration under Class-30, there is
      a disclaimer for the word ‘MALABAR’. The disclaimer is worded
      thus:-
            “Condition & Limitation: REGISTRATION OF THIS TRADE
E           MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE
            OF WORD ‘MALABAR’ AND ALL OTHER DESCRIPTIVE
            MATTERS”
              7. The appellant though claims exclusive right over the word
      ‘MALABAR’ since there is a disclaimer to the exclusive use of the
F     word ‘MALABAR’, the appellant has no right over the exclusive use of
      the word ‘MALABAR’. The respondents have also inter alia brought
      on record the materials to show the registration of other goods under
      Class-30 with the word ‘MALABAR MONSOON’ granted in favour
      of Amalgamated Bean Coffee Trading Company Limited for Coffee
G     Cream, Coffee included in Class-30. The registration of the mark
      ‘MALABAR MONSOON’ under Class-30 also contains similar
      disclaimer of the word ‘MALABAR’. Likewise, the label ‘MALABAR
      COAST’ has been registered in Class-30 for Coffee, Tea, Cocoa, Sugar
      etc. in favour of Tropical Retreats Private Limited which again contains
      a similar disclaimer for the exclusive use of the word ‘MALABAR
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  PARAKH VANIJYA PRIVATE LIMITED v. BAROMA AGRO                                   971
           PRODUCT [R. BANUMATHI, J.]

COAST’. Having regard to the materials placed on record, we are of                A
the view that the High Court rightly held that the appellant cannot claim
exclusive right over the use of the word ‘MALABAR’.
       8. Insofar as the label mark used by the parties, we have perused
the label mark of the appellant selling Biryani Rice with word
‘MALABAR’ and also the modified label mark of the respondents. The                B
label of the respondents containing the words “BAROMA”,
“MALABAR”, “GOLD” are circled having a different get-up from that
of the appellant. By comparison of the two label marks, in our view,
both appear to be substantially different. There appears to be no similarity
between both the labels, more so, deceptive similarity. Keeping in view
the interest of the respective parties who are said to be having substantial      C
turn-over in their respective business, the High Court rightly held that
the respondents would be entitled to use the word ‘MALABAR’ in
conjunction with ‘BAROMA’ with the different get-up as approved by
the High Court. We do not find any serious infirmity warranting
interference with the impugned order.                                             D
       9. Having regard to the various contentions raised by the parties,
the High Court rightly held that subject to the outcome of the suit, the
respondent can pursue their application for registration of the device.
Both parties have inter alia raised various contentions. Since the suit
and the respondent’s application for registration of its label with the marks     E
thereon under Class-30 is pending, we are not inclined to go into the
merits of those contentions. Lest, it would prejudicially affect the rights
of the parties in the pending suit and proceedings.
       10. In the result, the appeal is dismissed. All the contentious issues
raised by the parties are left open to be resolved in the suit. No costs.         F

Divya Pandey                                                  Appeal dismissed.




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