This case revolves around a trademark infringement and passing-off dispute concerning the use of the term "Qilla" in branding rice. M/S Amar Singh Chawal Wala (plaintiff) claimed that M/S Shree Vardhman Rice & General Mills (defendant) had infringed its registered trademarks by adopting the term "Hara Qilla" for its rice products.

The plaintiff sought an injunction to prevent the defendant from using "Hara Qilla," alleging that it was deceptively similar to its trademarks, including "Golden Qilla," "Lal Qilla," and "Neela Qilla." The Delhi High Court overruled a previous order, which had denied the injunction, and ruled in favor of the plaintiff, emphasizing likelihood of confusion and the plaintiff’s "family of marks."

Plaintiff's Business & Trademarks

1. Plaintiff’s Operations:

• Engaged in the rice trade since 1952, focusing on selection, processing, and merchandising.
• Adopted the word “Qilla” (meaning fort in Hindi/Urdu) as part of its branding.

2. Plaintiff’s Registered Trademarks:

• Golden Qilla (Registered: 1962)
• Lal Qilla (Registered: 1962)
• Neela Qilla (Registered: 1979)
• Device of Qilla (Fort image) (Registered: 1960)

3. Use & Recognition:

• These marks were extensively used and marketed, gaining substantial goodwill and recognition.
• The public associated "Qilla" with the plaintiff’s rice products.

Defendant’s Business & Trademark

1. Defendant’s Operations:

• Engaged in rice processing and sales, located in Panipat, Haryana.
• Adopted the name “Hara Qilla” (Green Fort) in 1978 for its rice brand.

2. Trademark Application & Opposition:

• Applied for trademark registration in 1989.
• Plaintiff opposed the registration, arguing that it was deceptively similar to its marks.
• The Assistant Registrar of Trade Marks ruled in favor of the plaintiff (1993), rejecting the defendant’s application.
• A review petition by the defendant was dismissed (1994).

3. Plaintiff’s Concerns:

• The defendant’s mark "Hara Qilla" was confusingly similar to the plaintiff’s trademarks.
• It misled consumers into believing it was part of the plaintiff’s "Qilla" family of marks.
• The defendant’s continued usage diluted the plaintiff’s brand value and eroded goodwill.

Procedural Background

• 1989: Plaintiff filed a suit in the Delhi High Court, seeking a permanent injunction against the defendant for infringement and passing off.
• 1993: Assistant Registrar of Trade Marks sustained the plaintiff’s opposition, rejecting the defendant’s trademark registration.
• 1994: Defendant’s review petition was dismissed.
• 1996: A Single Judge of the Delhi High Court denied interim relief, ruling that the trademarks were not deceptively similar.
• 2009: Division Bench (Appeal Court) overturned the 1996 ruling and granted an injunction in favor of the plaintiff.

Issues Involved

• Does the defendant’s trademark "Hara Qilla" infringe upon the plaintiff’s registered trademarks?
• Does the defendant’s use of "Qilla" cause confusion among consumers?
• Is the plaintiff entitled to exclusive rights over the word "Qilla" as part of a "family of marks"?
• Was there "honest concurrent use" by the defendant?

Submissions of Parties

Plaintiff’s Arguments:

• "Qilla" had acquired distinctiveness through long usage and consumer recognition.
• Defendant’s mark deliberately mimicked its branding to create confusion.
• Consumers could mistakenly associate "Hara Qilla" with the plaintiff’s range of rice products.
• The defendant’s use was dishonest and lacked evidence of independent concurrent use.

Defendant’s Arguments:

• "Hara Qilla" was distinctive, and "Qilla" was not monopolizable.
• No evidence showed that consumers confused the brands.
• Defendant’s use of "Hara Qilla" since 1978 was honest and concurrent.
• Plaintiff’s delay (1989-1996) amounted to acquiescence.

Discussion on Judgments & Legal Precedents

1. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980):

• Distinction between infringement and passing off.
• If a defendant’s mark is "deceptively similar", infringement is established.

2. Amritdhara Pharmacy v. Satya Deo Gupta (AIR 1963 SC 449):

• Examined phonetic similarity in trademarks.
• A common consumer does not analyze brand names in depth but relies on overall impression.

3. Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. (1989 PTC 61):

• Acquiescence (delay in action) does not automatically defeat a plaintiff’s claim.
• Mere delay does not justify continued infringement.

Court’s Reasoning & Analysis

• Likelihood of Confusion: "Qilla" was an essential part of the plaintiff’s branding. "Hara Qilla" sounded similar to "Golden Qilla" and "Lal Qilla," misleading consumers.
• Family of Marks Doctrine: The plaintiff had established a consistent naming pattern (Golden, Lal, Neela Qilla).
• No Honest Concurrent Use: Defendant failed to prove pre-1989 commercial usage with supporting invoices.
• No Acquiescence: Plaintiff acted immediately upon discovery (1986) through legal notices and trademark opposition.

Final Decision

• The 2009 ruling overturned the 1996 decision.
• Interim injunction granted – Defendant restrained from using "Hara Qilla".
• Defendant given 3 months to clear existing stock.
• Trial expedited for final resolution.

Key Legal Principles Settled

• Phonetic similarity is a strong factor in trademark infringement cases.
• Family of marks doctrine applies when a brand uses a consistent naming pattern.
• Lack of documented commercial use defeats "honest concurrent use" claims.
• Delay in filing does not necessarily amount to acquiescence.
• A registered trademark holder enjoys statutory protection, even if the word is not inherently unique.

Case Title:Amar Singh Chawal Wala vs M/S Shree Vardhman Rice & General Mills
Date of Order: May 29, 2009
Case No.: FAO (O) No. 138 of 1996 & C.M. No. 842 of 2001
Court: Delhi High Court
Coram: Chief Justice & Justice S. Muralidhar, H. J. 

Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: ajayamitabhsuman@gmail.com, Ph no: 9990389539