The Supreme Court has clarified that there can be no right to the exclusive use of the word “MALABAR”..A Bench of Justices Ranjan Gogoi and R Banumathi passed this judgment in a trademark battle for the use of the word Malabar for sale of Biriyani rice..The case was an appeal against an order dated March 1, 2017 passed by the High Court of Calcutta affirming the order of the Single Judge in which it was held that the respondent-defendant was entitled to use the word ‘MALABAR’ in conjunction with the mark ‘BAROMA’ for selling its product – Biryani Rice..By way of background, the appellant-plaintiff claimed to have been using the mark ‘MALABAR’ for selling Biryani Rice from 2001. The appellant filed a suit for infringement and passing off special Biryani Rice under the mark “MALABAR GOLD” or other mark/trade name which is identical with and/or deceptively similar to the appellant’s trade mark ‘MALABAR’..On consideration of various features of the respondent’s then mark and other materials, the Single Judge by an order dated July 2, 2012 granted interim injunction observing that there was similarity between the two marks and restrained the respondents-defendants from using the label mark ‘MALABAR’. The Division Bench declined to interfere with the said order..While the suit and application for temporary injunction was pending before the Single Judge, the respondents-defendants filed application for vacating the order of July 2, 2012 inter alia on various grounds contending that the appellant is relying upon fabricated documents and that the appellant cannot claim exclusive right over the mark ‘MALABAR’..After hearing the parties, the interim order of injunction initially passed, was modified by an order dated August 8, 2016 to the effect that the respondents shall be entitled to use the word ‘MALABAR’ in conjunction with ‘BAROMA’ where all the words and letters must be in the same font but the word ‘MALABAR’ may be increased with font size of not more than twenty-five percent than the rest of the words or letters..Being aggrieved, the appellant-plaintiff preferred appeal before the Division Bench. The Division Bench dismissed the appeal holding that the Single Judge has passed the order balancing the interest of the parties who are having a substantial turn over in their respective business..This led to the SLP in Supreme Court..The Supreme Court after considering the facts of the case noted that the appellant-plaintiff which uses the label mark MALABAR has been granted registration in Class-30 for its products..Class-30 of the classification of goods and services under the statute covers diverse spices and other edible materials as wheat, rice, coffee, tea etc. In the registration under Class-30, there is a disclaimer for the word ‘MALABAR’. The disclaimer reads as follows:.“Condition & Limitation: REGISTRATION OF THIS TRADE MARK SHALL GIVE NO RIGHT TO THE EXCLUSIVE USE OF WORD ‘MALABAR’ AND ALL OTHER DESCRIPTIVE MATTERS”.Adverting to the same, the court made it clear that since there is a disclaimer to the exclusive use of the word ‘MALABAR’, the appellant has no exclusive right to use the word ‘MALABAR’..“Having regard to the materials placed on record, we are of the view that the High Court rightly held that the appellant cannot claim exclusive right over the use of the word ‘MALABAR’.”.Thus, it ruled that the High Court rightly held that the respondents would be entitled to use the word ‘MALABAR’ in conjunction with ‘BAROMA’ with the different get-up as approved by the High Court..“We do not find any serious infirmity warranting interference with the impugned order.”.The Court also made it clear High Court was right in holding that subject to the outcome of the suit, the respondents can pursue their application for registration of the device..“Since the suit and the respondent’s application for registration of its label with the marks thereon under Class-30 is pending, we are not inclined to go into the merits of those contentions. Lest, it would prejudicially affect the rights of the parties in the pending suit and proceedings. …All the contentious issues raised by the parties are left open to be resolved in the suit.”.Read the judgment below.
