Shalimar Chemical Works Limited vs Registrar Of Trade Marks And Ors.

Syed Obaidur Rahaman, Technical Member

This miscellaneous petition is filed by the applicant/appellant for stay of the order dated 26.02.2007 passed by the Assistant Registrar of Trade

Marks wherein the opposition filed by the appellant herein was rejected and the application No. 647880 in class-23 filed by the respondent No. 3 was

allowed for registration.

2 . It is averred that the appellant is using the trade mark 'SHALIMAR' in respect of various goods for the last 66 years and registered the mark for

various classes i.e. classes 3, 5, 8, 16, 25, 30, 33 and 34 etc. On the other hand, the respondent No. 3 is using the mark since 1985 onwards for

wool/Cashmilon in class 23 for use in Eastern and North Eastern India. The application filed by the respondent No. 3 was allowed for registration and

the opposition filed by the applicant/appellant was disallowed. For these reasons, the appellant have filed the appeal.

The matter came up for hearing on 03.03.2009. Learned Counsel Dr. Alok M. Saha appeared on behalf of the applicant/appellant and Shri Arunava

Mukherjee, learned Counsel appeared for the respondent No. 3.

Learned Counsel for the applicant/appellant argued that their mark is well-known and reputed particularly in northern and southern India. Their

sales turn over is more than Rs. 140.0 crores and they have given wide publicity and have spend huge amount of money towards advertisement every

year. The mark is reputed particularly, coconut oil and other food substances for the last 66 years. It is a house-hold name in India. The appellant

annexed some advertisements of Shalimar Coconut Oil and copy of certificate of registration in various classes. The learned Counsel relied upon two

judgement, namely, (i) 2005 (31) PTC 121 (IPAB) Pradeep Kumar Dhoot and Anr. v. Jai Prakash Gupta and Ors. Wherein it was held that merely

because the goods are different in description, two identical marks cannot be registered for the simple reason that the well established goodwill and

reputation of the registered proprietor of the trade mark cannot be allowed be diluted or defaced by the registration of an identical mark in respect of

other goods. Further, when the registered mark had built up a reputation and goodwill of their own, naturally, there will be confusion or deception in the

minds of the public with the goods of the other description as if they are being produced by the same well known trade mark proprietor, when they

have no connection with the said product and (ii) 2005 (31) PTC 231 (IPAB) S. Sunil Gupta Trading v. Assistant Registrar of Trade Marks and Anr.

wherein it was held that even if the goods are totally different, without having any trade connection, but still if the impugned mark is identical and

similar to that of the well known or reputed mark of the opponent, then the impugned mark cannot be registered.

The applicant also filed a copy of the publication in Trade Marks Journal in respect of 'SHALIMAR CASHMILON' advertised on 22.03.1999

before acceptance. The learne Counsel for the applicant/appellant further submitted that the mark of the respondent No. 3 is identical and the

respondent No 3 is only encashing on the goodwill of the applicant/appellant. Hence he prayed that interim injunction be granted against the impugned

order dated 26.02.2007.

6 . The learned Counsel for the respondent No. 3 submitted that the goods are different so there is no likelihood of confusion. The trade channel is

different and the respondent No. 3 are using the mark only in respect of one goods, namely, cashmilon (wool) in class 23. The mark SHALIMAR is

not an invented mark. It is a common word. It denotes the Moghul garden situated 5 k.m. from border from India to Lahore on G.T. Road. The

garden was created by the great Moghul Emperor Shahjahan and nobody can claim monopoly over the common word 'SHALIMAR'. The learned

Counsel further contended that so many other trade marks were registered with the name SHALIMAR and other proprietors are also using the mark

with the word SHALIMAR So the mark will not create confusion in the minds of general public. The learned Counsel for the respondent No. 3

contended that stay cannot be granted and the miscellaneous application for stay be rejected.

We have heard the submissions of both counsel and gone through the documents and case laws referred to and after perusal of the same, we are

of the opinion that SHALIMAR of the appellant is a well-known or reputed trade mark and the explanation of the counsel for the respondent No. 3

that nobody can claim monopoly over the common word SHALIMAR is unacceptable. We are satisfied that the appellant has successfully established

the prima facie case to grant stay in terms of prayer (a) and (b) of paragraph 29 of the stay application. Accordingly, we grant stay order in terms of

prayer (a) and (b) as prayed for in paragraph 29 of the application.

M.P. No. 75/2007 is disposed of in terms as above. No order as to costs.