Protection afforded to name of deity akin to that of descriptive mark

In Bhole Baba Milk Food Industries Ltd v Parul Food Specialities Pvt Ltd (FAO(OS) 109/2011, October 17 2011), the Delhi High Court has accorded a low level of protection to the stylised mark KRISHNA in relation to milk and dairy products.
Bhole Baba Milk Food Industries Ltd is engaged in the business of manufacturing and selling ghee, milk, milk products and dairy products. It owned a registration for the stylised mark KRISHNA:
Parul Food Specialities Pvt Ltd began using the mark PARUL'S LORD KRISHNA’ ('Parul’s' and 'Lord' being written in small font and 'Krishna' in a larger font) on similar products.
Bhole Baba filed an action for infringement and passing off, seeking an injunction preventing Parul from using the word 'Krishna'. The court directed Parul to give the words ‘Parul’s' and 'Lord’ the same prominence as the word 'Krishna' by increasing the size of the font, but refused to issue an injunction.

The court held as follows:

  • The court is entitled to consider the issue of the validity of a registration even at the interlocutory stage. If the registration is suspect prima facie, it can refuse to issue an injunction for infringement.
  • Bhole Baba owned a registration for the stylised mark KRISHNA. Such a registration did not give exclusive statutory rights in a common word such as 'Krishna'. Its distinctiveness, if any, lay in the graphic representation of the mark as a whole.
  • To succeed in the passing-off action, Bhole Baba had to establish that the word 'Krishna' used on ghee, milk, milk products and dairy products had acquired a secondary meaning or ‘secondary distinctiveness’, so that, on seeing the KRISHNA mark, consumers would immediately associate the products with Bhole Baba. However, Bhole Baba had failed to adduce sufficient evidence of acquired distinctiveness, and mere evidence of use and sales figures were not sufficient in that regard.
  • When considering the volume of sales, the court had to take into consideration the extent of the market. Extensive sales in a large market would not be decisive in this regard. On the other hand, a limited volume of sales may be sufficient if the relevant market is also restricted.
  • The level of protection afforded to a mark like KRISHNA in relation to milk and dairy products would be akin to that afforded to a descriptive mark since, according to the court, “it is common knowledge that Lord Krishna, as a child, was known for his love of milk and butter and, thus, Lord Krishna is closely linked with milk and butter, and this would certainly dilute a proprietary claim projected by any person in relation to KRISHNA for dairy products”.
  • Several other entities used the mark KRISHNA in relation to identical products, and some of these entities owned trademarks including the word 'Krishna'. Therefore, it was difficult for Bhole Baba to establish that consumers would associate KRISHNA with its products only.
There are a few interesting aspects in this case. Until recently, the courts did not consider the issue of the validity of a registration at the interlocutory stage - that is, once registered, a registration was presumed to be valid for the purposes of determining whether an interlocutory injunction should be granted. This practice is changing, at least in the Delhi High Court - the Bombay High Court takes the opposite approach.
In many instances, descriptive marks written in a stylised manner have proceeded to registration. However, the court’s express finding that such registrations would not give exclusivity to the owners may undermine their value.
The finding that, since Krishna is associated with milk and milk products, the protection afforded to KRISHNA would be akin to that afforded to a descriptive mark, is quite unique.
Mustafa Safiyuddin, Legasis Partners, Mumbai

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