29 November, 2018
Doctrine of Zone of Natural Expansion
In a recent trademark case between Shree Rajmoti Industries (“Plaintiff”) vs Shree Vishwaprabha Food (“Defendant”), the Hon'ble Delhi High Court (“Court”) upheld the doctrine of zone of natural expansion.
The Plaintiff is the registered owner of the trademark 'Rajmoti' since 1962 and has used the said mark 'Rajmoti' for its edible oil products that included groundnut oil and cotton seed oil. The Plaintiff later expanded its business to aerated drinks, mineral waters, juices, fruit drinks, beers, etc. under the said mark i.e. 'Rajmoti'. The Defendant was selling rice under the identical mark 'Rajmoti Rice' and the usage of the identical mark by the Defendant was challenged by the Plaintiff.
The question that was presented before the Court was that wherein the usage of 'Rajmoti Rice' by the Defendant would result in an infringement of the registered trademark of the Plaintiff i.e. 'Rajmoti'.
The Court initially granted an ex-parte interim injunction on the basis of the principle of irreparable harm to the Plaintiff. Further, the Court stated that by the nature of the products sold by both the parties i.e. oil and rice may be placed next to each other and the class of consumer being identical, it might lead to the confusion among the consumer base of the Plaintiff.
Additionally, the Court stated that it is natural for the owner to acquire and use a trademark and thereafter expand the same into similar products and cognate and allied goods.
The Court also placed reliance on the case of Laxmikant Patel v. Chetanbhai Shah, wherein Supreme Court held that the case of passing off should be judged from a futuristic perspective i.e. future expansion of a business as wel and not merely from the existing user of the competing parties.
The Supreme Court further held that the ground should not be limited to the date of the proceedings; the Court shall have regard to the way the business may be carried on in the future, and not just being carried on precisely on at the date of the proceedings. Where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.
The Court further stated the fact that the nature as well as the market of the goods sold by both the parties i.e. edible oil and water on the one hand and rice on the other are cognate / allied and thus constitute similar goods. Hence, the Court applied section 29 (2) of the Trade Marks Act, 1999 and held that since the registered trademark and the impugned trademark are identical in nature, it is sufficient to prove of the goods to establish infringement of the said trademark.
For further information, please contact:
Vineet Aneja, Partner, Clasis Law
vineet.aneja@clasislaw.com
