Bombay HC Grants Temporary Restraint Against Mumbai Khadi & Village Industries Association from Using ‘KHADI’ Mark

Bombay High Court Law Insider

Aastha Thakur

Published on: 19 December 2022 at 17:40 IST

The Bombay High Court has put a temporary restraint against the Mumbai Khadi and Village Industries Association from using the mark ‘KHADI’ & ‘CHARKHA’ or any deceptively similar mark for purpose of selling product.

The Justice Manish Pitale, while dealing with this matter, stated that the deceptive representation of a similar mark may amount to passing it off.

The infringement suit was filed by Khadi and the Village Industries Commission for allegedly infringing and passing off its registered trademark ‘KHADI’ and its variants, including word mark, device mark, and label mark, in various classes.

The petitioner submitted that the impugned marks, consisting of the word ‘KHADI’ and a ‘Charkha’ logo, have been used by the defendant since September 1956, which prima facie is in conjunction with the plaintiff’s marks.

The counsel representing the plaintiff Dr. Birendra Saraf argued that the defendant should not be permitted to use the plaintiff’s registered trademark upon the withdrawal of the certificate. As evidence to prove defendant made a false statement earlier, the Commission produced two kurtas from defendant’s shop having similar trademarks under the mark ‘KHADI’.

The defence counsel, in response, claimed that it was the prior user of the word ‘KHADI’ since 1946. Furthermore, it was submitted that the defendant was abiding by the undertaking, and if the plaintiff had any grievance in that regard, the proper remedy was to file an application under Section XXXIX, Rule 2A, of the Code of Civil Procedure, 1908 (CPC) in the said disposed of suit.

After perusing the submission of the defendant, the court noted that the defendant, in its undertaking, agreed to not sell any khadi product without the plaintiff’s approval. So, the reliance placed by the defendant upon the definition of ‘khadi’ given in Section 2(d) of the KVIC Act is not acceptable.

The court observed that the defendant’s main line of profit comes from the business of ‘khadi’ cloth products, and the other products are covered under marginal reference. The plaintiff has a strong prima facie case, to establish the dishonesty and falsity claims made by the defendant.

It was held that the plaintiff was within its rights to move an application under Order XXXIX, Rule 2A of the Civil Procedure Code, 1908.

Hence, the court temporarily restrained the defendant from further indulging in such conduct.

“….the plaintiff will suffer grave and irreparable loss, thereby indicating that the balance of convenience is also in favour of the plaintiff. This court accepts the plaintiff’s argument that the use of the word ‘KHADI’ which is the prominent, essential, fundamental, and substantial feature of the trademark, in the defendant’s corporate name prima facie amounts to passing off.”

Case Title – Khadi & Village Industries Commission v. Board of Trustees, Mumbai Khadi and Village Industries Association

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