In the matter of Royal Dryfruit Range vs. Royal Suvidha [Commercial I.P. Suit (L) No.548 of 2019] the Bombay High Court granted an interim injunction restraining the Defendant from using the marks ROYAL SUVIDHA, ROYAL FALOODA MIX or any other mark featuring ROYAL with respect to dry fruits.
The Plaintiff filed a suit for infringement as well as passing off of its registered trademark . The Plaintiff claimed to be using the mark since 2012 as the trade name of its dry fruit business, and objected to the Defendant’s operating a dry fruits shop under the tradename ROYAL SUVIDHA about a 100 yards away from the Plaintiff’s establishment. The Plaintiff alleged that the Defendant had put up a board with ROYAL SUVIDHA DRYFUITS outside its shop, with the word ROYAL highlighted and the word SUVIDHA smudged, indicative of the Defendant’s intention to pass off his business as that of the Plaintiff’s. The Plaintiff’s case was that ROYAL was a “…leading, essential, prominent…” feature of its mark, and the Defendant’s use infringed it.
The Defendant argued that the Plaintiff does not have exclusive rights to the word ROYAL. It pointed out that there were nearly 22 others whose registered marks featured ROYAL, and that the Plaintiff had not tried to enforce against any of them.
Taking the view that the Defendant was estopped from contending the word ROYAL was publici juris, the Court noted “I fail to understand how can defendant itself apply for registration of the mark ‘ROYAL SUVIDHA’ where the word ‘ROYAL’ is prominent… If according to defendant, the word ‘ROYAL’ is generic and plaintiff cannot claim exclusivity to the word ‘ROYAL’, certainly the same principle would apply to defendant and defendant cannot claim to be the proprietor of a trade mark used or proposed to be used by him where the word “ROYAL” is prominent.”
While granting interim relief to the Plaintiff, the Court observed that “…even if plaintiff does not take action, that does not give right to defendant to state that unless plaintiff takes action against whole world, he would continue to commit infringement of plaintiff’s trade mark or pass off his goods as that of plaintiff.”