In the present case, the mark RASNA is a registered trademark of the plaintiffs which is being used by them for the last forty years and it has acquired goodwill and reputation as per the material placed on record. The said trademark has also been protected from time to time. After having examination of defendants’ products which are scanned and are shown in para 19 of my order of interim stay, prima facie establishes that the defendants intend to use it as a sub brand and not in descriptive sense. Thus, the present case and the cases referred to by the defendants are materially different. From the above, it is clear that the use of the mark RASNA by the defendants as a name or sub-mark amounts to infringement even if the registered trademark in not used by the plaintiffs as there is no requirement of user under the provisions of infringement of trademark or conferring the exclusive rights granted by virtue of registration, non user is a one of the defence which may be considered by the courts while deciding the interim application. It is a practice in law that till the time the registered trademark is entered in the register, no one is entitled to infringe the same unless the court comes to the conclusion the mark adopted and used by the defendants is covered within the meaning of Section 30 and 35 of the Act and such user is not made in bad faith.
In the present case, RASNA is prima facie cannot be said to be descriptive mark in view of the averments made by the plaintiffs in the plaint and documents placed on record. At the most the word RAS in relation to soft drink concentrates can be suggestive word which describes the character and quality of the goods. Mr. Praveen Anand, learned counsel appearing on behalf of the plaintiffs gave proposal to settle the matter and his clients have no objection if the defendants may amend the use of trademark PAN RAS instead of RASNA. The suggestion given by the plaintiffs was not acceptable to the defendants. So, the interim stay was given to the plaintiffs.
Conduct of the defendants
It is not understood as to why the defendants have chosen the mark RASNA in relation to tobacco products when the defendants have already had the mark BOMBAY PAN as one of the flavours. It is also surprised to note that the defendants are using the name Rooh Afza which is the known Trademark of Hamdard Dawakhana. It appears to the court that these names are used by the defendants in order to impress the customers that the defendants have some association with these companies. In case the defendants are allowed to use the name RASNA, tomorrow they will use the name PAN PEPSI/PAN LIMCA/PAN AQUAFINA etc, as other flavours. The products in question already contain the warning that “it is injurious to health” and it causes cancer. The trademark which has already acquired residual goodwill and reputation if used by another party other than real owner, there would be fair chances of danger of tarnishment and dilution of the same, otherwise, Hukkah tobacco manufactured by the defendants do not have either the PAN RAS ingredient or any content which can cure the soul as the defendants are using the expression ROOH AFZA. The said claim of the defendants in nature of flavor gives in the indication of False Trade Description and is untrue within the knowledge of the defendants.
In my view that there is hardly any hardship to the defendants in case the interim order granted would continue. The balance of convenience also does not lie in favour of the defendants. If the defendants are allowed to use the trade name RASNA or part of PAN RASNA, no doubt the plaintiffs will suffer irreparable harm not only financially but also to their goodwill and reputation. Thus, the adoption of the said name is not with bona fide intention but it appears that it was deliberate with mala fide intention on the part of defendants in order to take the advantage of known trademark in the market. As far as the existence of stock is concerned as well as the goods seized by the Local Commissioner which are given on superdari, the defendants are allowed to sell the same after deletion or obliteration of the mark RASNA from them, they are also entitled to export the same. The defendants are also entitled to use the mark PAN RAS or any other expression except the word RASNA on their products.
For the aforesaid reasons, the application of the defendants under Order 39 Rule 4 CPC is dismissed as there is no merit. On the other hand the plaintiffs’ application under Order 39 R1 and 2 CPC being IA No.15532/2011 is allowed. The defendants during the pendency of the suit are restrained to use the trademark RASNA in relation to Tobacco products including Pan Masala. Both applications are accordingly disposed of and the interim stay is given.