Recently, the Delhi High Court granted an interim injunction in favour of Khandelwal Edible Oils Limited (“Plaintiff”) in a trade mark and copyright infringement suit against Landsmill Agro Private Limited (“Defendant”), for unauthorized use of CHAKRA and CHAKRA-formative marks and similar packaging in relation to edible oils.
As per the Plaintiff, it adopted and has used the mark CHAKRA for edible oils since 1997 and also owns a trade mark registration for this mark. The Plaintiff also owns copyright for the packaging of its edible oils. The Plaintiff submitted that the Defendant’s CHAKRA KOLHU, CHAKRESH, and CHAKRIKA marks and packaging bear a striking similarity in style, print, colour scheme, and overall presentation to the Plaintiff’s marks and packaging, thereby constituting infringement. The Plaintiff also brought to the attention of the court, the Defendant’s averments as to the similarity of the rival marks, in a cancellation action it had filed against the Plaintiff’s registration for the CHAKRA mark.
The Defendant, on the other hand, argued that the term CHAKRA is common to trade, being descriptive of the manner of oil extraction and therefore, the Plaintiff cannot claim monopoly over such a word. The Defendant further claimed that it uses its marks in relation to multigrain edible oil, as opposed to mustard oil in relation to which the Plaintiff uses its marks. As regards the allegation of prosecution history estoppel, the Defendant claimed that this was merely a clerical error and it had, in the rectification petition also taken the ground of CHAKRA being common to trade.
The court observed that the Defendant failed to establish that the mark CHAKRA was common to trade, and noted that the rival marks and goods are deceptively similar. As regards descriptiveness of the CHAKRA mark, the court clarified that a mark must be descriptive of the characteristics of the goods and services, and not of the manner in which they are produced, which is the case here. Further, the court was of the view that the Defendant had earlier advanced contrary submissions and cannot escape from its own admissions as to deceptive similarity of rival marks. Additionally, the court found that a case of copyright infringement is also made out due to substantial similarities in the labels. In conclusion, the court held that the Defendant's CHAKRA KOLHU mark infringed the Plaintiff’s rights in the CHAKRA mark, however, the other marks, namely, CHAKRESH and CHAKRIKA are not similar to the Plaintiff’s mark. The court, accordingly, granted an interim injunction along these lines.
Judgement Docs can be accessed here,https://shorturl.at/otCZ7 .
Khandelwal Edible Oils Limited v. Landsmill Agro Private Limited, CS(COMM) 568/2021, Judgement dt. December 22, 2023