The high court passed an "interim order" restraining VSSPL from making, using, promoting, marketing, advertising, offering or exposing for sale, selling any product other than Kohinoor's BT cotton hybrid seeds, which is deceptively similar to Kohinoor's trademarks, until the next date of hearing.
By: Express Web Desk | Delhi |
December 12, 2022
The Delhi High Court has recently restrained an Andhra Pradesh-based seed marketing and distribution company from promoting or advertising any product other than BT cotton products trademarked by Kohinoor Seed Fields India Pvt Ltd after the latter filed a trademark infringement lawsuit.
A single judge bench of Justice Amit Bansal was hearing the plaintiff, Kohinoor Seed, a leading seed company which has been selling transgenic BT Cotton hybrid seeds since 2014-2015 under the registered trademarks Sadanand, Tadakhaa, and Basant, which were also approved by the Genetic Engineering Appraisal Committee (‘GEAC). The BT cotton seed varieties had the following names KSCH-207 BG II, KSCH-232 BG II, and KSCH-212 BG II.
In 2014, the plaintiff entered into a “non-exclusive co-marketing agreement” Veda Seed Sciences Private Limited (VSSPL), which was renewed annually, for “marking and distribution of the aforesaid hybrid seed varieties”. According to the agreement, VSSPL gave an undertaking that except in respect of the Cotton Hybrid Seeds of Kohinoor it would “not sell any other hybrid seeds under the brand names permitted under the Agreement”.
In October this year, Kohinoor found that VSSPL was promoting and taking advance bookings for the Kharif season 2023 for the sale of BG II cotton hybrid seeds under the names of Veda Sadanand Gold, Veda Tadaakha Gold and Veda Basant Gold, the impugned trademarks. Kohinoor argued that VSSPL used the impugned marks in relation to cotton hybrid seeds which did not belong to Kohinoor and were hence outside the permitted scope of the marketing agreement.
The high court “prima facie” observed that the advance booking taken by VSSPL under the impugned trademarks is with respect to BT cotton seeds which do not belong to Kohinoor and hence violated the terms of the marketing agreement. The court held that the “use of the impugned marks for goods in the same class by the defendants, prima facie, also amounts to infringement as well as passing off”. It also noted that the packaging and aesthetic of VSSPL’s products were “deceptively identical” to that of Kohinoor’s.
The high court said that even though VSSPL had used a suffix before the names of its products, the use of Kohinoor’s marks with or without a prefix and/or suffix by VSSPL for different hybrid seeds would not result in a material difference, to distinguish the latter’s marks from those of Kohinoor’s. It was also held that Kohinoor was a “prior user” and had established a “reputation and goodwill for its products in the target market”.
Considering these factors, the Delhi High Court in its December 1 order opined Kohinoor had established a prima facie case in its favour. “The defendant’s (VSSPL) use of the impugned marks is likely to cause greater confusion as the defendant has been a co-marketer of the plaintiff’s (Kohinoor) cotton hybrid seeds and its marks since 2014. Thus, the balance of convenience is in favour of the plaintiff. Irreparable harm and injury would be caused to the plaintiff if an ex-parte injunction is not granted in favour of the plaintiff,” it held. (Source: https://indianexpress.com)