Modern Snacks Pvt Ltd v. Modern Foods Enterprises Pvt Ltd

Modern Snacks Pvt Ltd v. Modern Foods Enterprises Pvt Ltd

CS(COMM) 299/2020 & CS(COMM) 460/2020 & I.A. 17069/2022

Decided on: 04.07.2023

Brief Facts:

There is a legal dispute between two companies, M/s Modern Food Enterprises Pvt. Ltd. (referred to as the ‘plaintiff’) and M/s Modern Snacks Pvt. Ltd. (referred to as the ‘defendant’). The plaintiff has filed a lawsuit (CS(COMM) 460/2020) against the defendant, accusing them of trademark infringement and passing off. They are seeking a permanent injunction. On the other hand, the defendant has filed another lawsuit (CS(COMM) 299/2020) seeking a permanent injunction to stop the plaintiff from issuing groundless threats relating to the use of the trademark 'MODERN'. Both parties claim rights over the trademark 'MODERN' for various food products.

Arguments of the Plaintiff:

The plaintiff claimed to have prior rights over the trade mark 'MODERN' which it had been using for various bakery products since 1965. The plaintiff argued that the defendant's use of the same trade mark for Namkeen, snacks, and allied goods could potentially cause confusion among consumers and the trade. The plaintiff believed that the defendant had adopted the trade mark dishonestly and that the defendant's trade mark and packaging were deceptively similar to the plaintiff's. Additionally, the plaintiff argued that its extensive advertising and substantial sales figures were evidence of the reputation and goodwill associated with the trade mark 'MODERN'.

Argument of the Defendant:

The defendant claimed that their use of the 'MODERN' trademark for Namkeen, snacks, and related products was honest and concurrent, and they had obtained registrations and copyrights for their marks and labels. They argued that their products were not similar to those of the plaintiff, and therefore, there was no likelihood of confusion. The defendant also alleged that the plaintiff had knowledge of their mark since 2003 and even acknowledged in previous documents that their mark was dissimilar. Furthermore, the defendant accused the plaintiff of withholding evidence regarding their own application for registration and misrepresenting their usage since 1965.

Analysis and Reasoning:

The court case at hand involves the plaintiff's claim of being the owner of the trademark "MODERN." The plaintiff has presented evidence of their extensive use of the mark since 1968 and registration of various trademarks containing the word "MODERN." However, the defendant disputes this claim, arguing that there is no evidence to support the plaintiff's use before April 2016. The court has examined the plaintiff's submission of newspaper articles and has found them to be prima facie evidence of prior use, rejecting the defendant's argument.

Moving on, the court has addressed the similarity of goods between the plaintiff's and the defendant's products. The defendant argues that their products, which include Namkeen, snacks, and savouries, are different from the plaintiff's products, which are bread and bakery items. They believe this reduces the likelihood of confusion. However, the court disagrees, stating that both parties' products are general consumable food items that are commonly available in the same stores. Therefore, they could easily be confused as extensions of each other. Based on Section 29(2) of the Act, the use of an identical mark for similar goods is considered infringement.

Holding and Decision:

The court has concluded that the plaintiff has successfully established a preliminary case of infringement and is therefore entitled to an interim injunction. However, the court has also taken into account the defendant's claim of honest concurrent use and the implications of the plaintiff's delay in initiating legal action. As a result, the court has ordered the defendant to refrain from using the trademark "MODERN" for any goods other than those they were already selling at the time of the lawsuit's filing, as well as for any products for which they have already registered this mark. Additionally, the defendant is also prohibited from expanding its line of products using the "MODERN" trademark during the pendency of the lawsuit.

Implications and Significance:

The decision taken in this case will have significant implications for future cases involving trademark infringement. It reasserts the principle that if there is a possibility of confusion among consumers, even if the goods are similar but not identical, they can be considered infringing. The ruling also highlights that if the plaintiff delays taking legal action, it can affect the court's decision on granting an injunction, even if the plaintiff has established a prima facie case.

Conclusion:

The court's decision in Modern Snacks Pvt. Ltd. vs. Modern Food Enterprises Pvt. Ltd. highlights the importance of timely protection of trademarks and establishing prior use. The plaintiff successfully demonstrated trademark infringement due to similarities between both parties' products. The court emphasized the significance of prompt legal action in protecting trademark rights and provided guidance on the impact of delayed legal action and honest concurrent use. This judgment reinforces the notion that even products with similarities can be subject to infringement claims.Top of Form