202004.07
15

Acquiescence is not silence or inaction

Does use of a trademark post retirement from the partnership business would result in violation of rights? What would constitute acquiescence? These are the two main issues of conflict between the parties in catering business. The Plaintiff, Rajesh Kumar Agarwal & others (Rajesh) filed suit before the Calcutta High Court alleging trademark infringement, passing off and sought restrain order against the Defendant, Sanjay Gupta (Sanjay) from using the mark “GANPATI’S”. The post discusses the arguments by parties and court decision on injunction application.

Rajesh in the suit contended:

  1. They commenced catering business under the name and style ‘Ganpati Enterprises’ in 1996. In April 2000, they set up partnership with Sanjay and carried on business under the name and style ‘Ganpati Enterprises’. The partnership firm obtained registration for “GANPATI’S” in Class 42.
  2. Sanjay retired from the partnership in February, 2013, and a retirement deed was executed whereby he gave up all rights in the partnership including those in the registered trade mark “GANPATI’S”.
  3. Rajesh thereafter obtained assignment of the trade mark and registered the same in his favour and thus, entitled to exclusive use of “GANPATI’S”.
  4. Sanjay is currently carrying on an identical business of catering within the city of Calcutta. Sanjay’s use of the mark “GANPATI’S” amounts to trademark infringement and passing off. 

Sanjay in support of his case stated:

  1. On retirement from the partnership he is using the name ‘Ganpati’s Sanjay’, ‘Ganpati’s Saurav’ and ‘Om Ganpati’s Caterers’ in relation to his business which is different from ‘Ganpati’s Rajesh’. 
  2. The word ‘Ganpati’s’ is generic, descriptive and not distinctive. 
  3. The averment that Rajesh became aware of the use of ‘Ganpati’s Sanjay’ in March, 2019, is false.  There are sufficient materials to evidence that the marks ‘Ganpati’s Sanjay’, ‘Ganpati’s Saurav’ and ‘Om Ganpati’s’ are being used over a considerable period of time without any objection from Rajesh and thus, there is acquiescence.

The court after considering the pleadings, arguments and case laws held:

  • The factum of erstwhile partnership, subsequent dissolution and execution of a formal retirement deed in the year 2013 is not disputed. As per the retirement deed Sanjay relinquished all his rights, title and interest in respect of the partnership firm including trade mark in favour of the partnership.
  • Sanjay’s defence that Rajesh has acquiesced in the use of the word ‘Ganpati’s Sanjay’ is not sustainable. It is judicially settled acquiescence is a course of conduct inconsistent with the claim for exclusive rights of the trade mark and trade name and implies positive acts. Mere silence, inaction or latches do not amount to acquiescence. 
  • Sanjay had given up its right to use the word “GANPATI’S” by executing retirement deed in the year 2013. This precludes him from using the word ‘Ganpati’s Sanjay’ or ‘Om Ganpati Caterers’ or words deceptively similar to “GANPATI’S”. Moreover, there is nothing on record to establish that Rajesh acquiesced in Sanjay using the word ‘Ganpati’s Sanjay’ or ‘Om Ganpati Caterers’. Mere user of the word will not suffice and Sanjay has to establish acquiescence when it sets up a defence.
  • The contention that ‘Ganpati’s’ is generic and not distinctive has to be considered in the context that the parties in the past were carrying on business in partnership and using the trademark “GANPATI’S”. Thereafter, Sanjay gave up the right to use such mark on retirement. Thus, when Sanjay claims using a suffix or a prefix to the original mark ‘Ganpati’s’ he acknowledges something has to be added to the original mark as a suffix or a prefix to distinguish the new entity. The suffix used by Sanjay cannot be said to be sufficient to create a distinction in comparison to the original mark. The suffix is added to the original mark ‘Ganpati’s’ which is registered with Rajesh and Sanjay’s attempt to register the label ‘Ganpati’s was not successful. Thus, at this stage it can be concluded that ‘Ganpati’s Sanjay’ is deceptively similar to ‘Ganpati’s.
  • As both the parties are in the catering business and use the word “GANPATI’S” with the additional word ‘Ganpati’s Rajesh’ and ‘Ganpati’s Sanjay’, a prospective customer is likely to be confused.  Thus, Rajesh has made out a case for grant of injunction.

In light of the above the Court granted an injunction restraining Sanjay from using the mark ‘Ganpati’s in relation to their business pending disposal of the suit.