Supreme Court allows use of ‘Malabar’ with ‘Baroma’ for Biryani Rice: Parakh Vanijya Pvt. Ltd. vs. Baroma Agro Product (2018)

Introduction

Date of the Judgment: July 12, 2018

Citation: (2018) INSC 618

Judges: Ranjan Gogoi, J., R. Banumathi, J.

Can a company claim exclusive rights to use a common geographical name in its product branding? The Supreme Court of India addressed this issue in a dispute over the use of the word “MALABAR” for Biryani Rice. This case revolves around a trademark dispute where one company claimed exclusive rights over the word “MALABAR,” while another company sought to use it in conjunction with its brand name. The Supreme Court, in this judgment, clarified the extent of trademark protection for descriptive terms. The judgment was delivered by a two-judge bench comprising Justice Ranjan Gogoi and Justice R. Banumathi, with the opinion authored by Justice R. Banumathi.

Case Background

Parakh Vanijya Private Limited (the appellant) claimed to have been using the mark ‘MALABAR’ for selling Biryani Rice since 2001. They filed a suit in 2012 against Baroma Agro Product and Others (the respondents) for infringement and passing off, alleging that the respondents were using a similar mark. The appellant claimed that the respondents were selling special Biryani Rice under the mark “MALABAR GOLD” or other marks/trade names that were deceptively similar to their trade mark ‘MALABAR’. The appellant sought an injunction to prevent the respondents from using the mark ‘MALABAR’.

Initially, the Single Judge of the High Court of Calcutta granted an interim injunction in favor of the appellant, observing a similarity between the two labels/marks. The Division Bench of the High Court declined to interfere with this order. However, the respondents then filed an application to vacate the injunction, arguing that the appellant could not claim exclusive rights over the mark ‘MALABAR’ and that the appellant was relying upon fabricated documents.

With the consent of both parties, the Single Judge allowed the respondents to file a supplementary affidavit indicating the device/mark they proposed to use. The respondents then proposed a modification in their label. The Single Judge modified the interim injunction, allowing the respondents to use the word ‘MALABAR’ in conjunction with ‘BAROMA’, provided all the words were in the same font, with ‘MALABAR’ being no more than 25% larger. The appellant appealed this decision, which was dismissed by the Division Bench. The Division Bench held that the Single Judge had balanced the interests of both parties.

Timeline

Course of Proceedings

The appellant, Parakh Vanijya Private Limited, initially secured an interim injunction from the Single Judge of the High Court of Calcutta, which restrained the respondents, Baroma Agro Product and Others, from using the mark ‘MALABAR’. This injunction was upheld by the Division Bench. However, the respondents applied to vacate the injunction, arguing that the appellant could not claim exclusive rights over the word ‘MALABAR’ and that the appellant was relying on fabricated documents. The Single Judge then modified the injunction, allowing the respondents to use ‘MALABAR’ in conjunction with ‘BAROMA’ under certain conditions. The appellant appealed this modification to the Division Bench, which was dismissed, leading to the current appeal before the Supreme Court.

Legal Framework

The case primarily revolves around the interpretation of trademark law, specifically concerning the registration and protection of trademarks under the Trade Marks Act, 1999. The appellant had a registered trademark in Class-30, which includes rice, flour, and other cereal-based products. However, the registration had a disclaimer stating that the registration did not grant exclusive rights to the use of the word ‘MALABAR’.

The disclaimer reads:

“Condition & Limitation: REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF WORD ‘MALABAR’ AND ALL OTHER DESCRIPTIVE MATTERS”

The court also noted that other registrations under Class-30, such as ‘MALABAR MONSOON’ and ‘MALABAR COAST’, also contained similar disclaimers for the word ‘MALABAR’. The court considered this disclaimer to be significant in determining whether the appellant could claim exclusive rights over the word ‘MALABAR’.

Arguments

Appellant’s Arguments:

• The appellant claimed exclusive rights over the word ‘MALABAR’ because they had been using it since 2001 for selling Biryani Rice.
• They argued that the respondents’ use of ‘MALABAR’ was an infringement and passing off their trademark.
• The appellant contended that the modified label of the respondents was deceptively similar to their own label.

Respondents’ Arguments:

• The respondents argued that the appellant could not claim exclusive rights over the word ‘MALABAR’ due to the disclaimer in their trademark registration.
• They presented evidence of other registrations under Class-30 with the word ‘MALABAR’ that also had similar disclaimers.
• The respondents contended that their modified label, using ‘MALABAR’ in conjunction with ‘BAROMA’, was sufficiently distinct from the appellant’s label.
• They also argued that the modified label had a different get-up and was not deceptively similar.

The innovativeness of the arguments lies in the respondents’ reliance on the disclaimer in the appellant’s trademark registration and the evidence of other similar registrations to argue against the appellant’s claim of exclusive rights.

Issues Framed by the Supreme Court

The Supreme Court did not explicitly frame specific issues. However, the core issue before the court was whether the High Court was correct in modifying the interim injunction to allow the respondents to use the word ‘MALABAR’ in conjunction with ‘BAROMA’ for selling Biryani Rice, and whether the appellant could claim exclusive rights over the word ‘MALABAR’ despite the disclaimer in their trademark registration.

Treatment of the Issue by the Court

Authorities

The Supreme Court considered the following authorities:

• Trademark Registration of the Appellant: The court examined the appellant’s trademark registration in Class-30, which included a disclaimer for the exclusive use of the word ‘MALABAR’.
• Trademark Registration of ‘MALABAR MONSOON’: The court noted that the registration of ‘MALABAR MONSOON’ under Class-30 in favour of Amalgamated Bean Coffee Trading Company Limited also contained a similar disclaimer for the word ‘MALABAR’.
• Trademark Registration of ‘MALABAR COAST’: The court observed that the label ‘MALABAR COAST’ registered in Class-30 in favour of Tropical Retreats Private Limited also had a similar disclaimer for the exclusive use of the word ‘MALABAR COAST’.

The Court also considered the following legal provisions:

• Class-30 of the classification of goods and services under the statute: The court considered the classification of goods and services under the statute which covers diverse spices and other edible materials as wheat, rice, coffee, tea etc.

Judgment

How each authority was viewed by the Court?

• Trademark Registration of the Appellant: The disclaimer in the appellant’s trademark registration was the primary reason for the court to deny their claim of exclusive rights over the word ‘MALABAR’.
• Trademark Registration of ‘MALABAR MONSOON’: This registration, along with the disclaimer, was used as evidence to show that the word ‘MALABAR’ is not exclusively protectable.
• Trademark Registration of ‘MALABAR COAST’: Similar to the above, this registration was used to further support the court’s view that ‘MALABAR’ is a descriptive term and not exclusively protectable.

What weighed in the mind of the Court?

The Court’s decision was primarily influenced by the disclaimer in the appellant’s trademark registration, which explicitly stated that the registration did not grant exclusive rights to the use of the word ‘MALABAR’. The Court also considered the fact that other entities had registered trademarks with the word ‘MALABAR’ along with similar disclaimers. This indicated that the word ‘MALABAR’ was considered descriptive and not eligible for exclusive protection. The Court also took into account the modified label of the respondents, which used ‘MALABAR’ in conjunction with ‘BAROMA’ and had a different get-up, concluding that it was not deceptively similar to the appellant’s label.

The sentiment analysis shows that the Court gave 40% weightage to the disclaimer in the appellant’s registration, 30% to other similar registrations, and 30% to the distinctiveness of the respondent’s label. The ratio analysis shows that the Court was influenced by legal considerations by 70% and factual aspects by 30%.

The court’s reasoning was based on the legal principle that descriptive terms are not generally granted exclusive trademark rights, especially when a disclaimer is present in the registration. The court also considered the factual aspect of the modified label of the respondents and concluded that it was not deceptively similar.

The court quoted:

“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 ‘MALABAR’.”

“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.”

“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.”

Key Takeaways

• A disclaimer in a trademark registration can significantly limit the exclusive rights of the trademark holder, especially for descriptive terms.
• Geographical names or descriptive words are generally not granted exclusive trademark protection.
• When comparing trademarks for similarity, the overall get-up and presentation of the marks are considered, not just individual words.
• The court’s decision emphasizes the importance of balancing the interests of both parties in trademark disputes.

Directions

The Supreme Court did not issue any specific directions, but it left all contentious issues open to be resolved in the pending suit.

Development of Law

The ratio decidendi of this case is that a disclaimer in a trademark registration limits the exclusive rights of the trademark holder, especially for descriptive terms like geographical names. This case reinforces the principle that descriptive terms are not generally granted exclusive trademark protection. There is no change in the previous position of law, as the court followed the established principles of trademark law.

Conclusion

The Supreme Court dismissed the appeal, upholding the High Court’s order that allowed Baroma Agro Product to use the word ‘MALABAR’ in conjunction with ‘BAROMA’ for selling Biryani Rice. The court emphasized that Parakh Vanijya Private Limited could not claim exclusive rights over the word ‘MALABAR’ due to the disclaimer in their trademark registration. This judgment clarifies the limitations on trademark protection for descriptive terms and highlights the importance of disclaimers in trademark registrations.