The case of Kewal Krishan Kumar vs. Rudi Roller Flour Mills (P) Ltd. & Anr. is a significant decision in trademark law, dealing with the question of whether two similar-sounding trademarks can co-exist in the market without causing consumer confusion. The dispute arose between Kewal Krishan Kumar, the owner of the trademark “Shakti Bhog,” and Rudi Roller Flour Mills (P) Ltd., which sought registration for the mark “Shiv Shakti” along with the device of ‘Trishul’ and ‘Damru.’ The plaintiff challenged the registration, alleging deceptive similarity, while the defendants argued that their mark was distinct in both phonetic and visual aspects. The Delhi High Court, through a division bench of Chief Justice Mukundakam Sharma and Justice Sanjiv Khanna, adjudicated the matter and upheld the decision of the Assistant Registrar of Trademarks in favor of the defendants.

• Factual Background:
  • The appellant, Kewal Krishan Kumar, was engaged in trading wheat flour (atta) under the registered trademark “Shakti Bhog.” The trademark was registered in his name effective from June 16, 1982.
  • He objected to the registration of the trademark “Shiv Shakti,” applied for by Rudi Roller Flour Mills (P) Ltd. in Class 30 for atta, maida, and suji. The defendant had claimed usage of this mark since March 6, 1990.
  • The Assistant Registrar of Trademarks examined the opposition and found that the sales of the defendant's products ran into crores of rupees per month.
  • The registrar also observed that the defendant had used the mark consistently and extensively without any instances of confusion being reported.
  • It was further held that the addition of the words "Shiv" and the associated religious symbols (Trishul and Damru) created a distinct impression, differentiating it from "Shakti Bhog."
  • The Assistant Registrar ruled in favor of Rudi Roller Flour Mills (P) Ltd., allowing the registration of the trademark “Shiv Shakti.”
  • Aggrieved by this decision, the appellant filed a Civil Miscellaneous (Main) petition before the High Court, which was dismissed by a single judge on November 21, 2002, leading to the present appeal before the division bench.
• Procedural Background:
  • The case began with an application for trademark registration filed by Rudi Roller Flour Mills (P) Ltd. for "Shiv Shakti" in 1990.
  • The appellant filed an opposition, arguing that "Shakti" was an essential feature of "Shakti Bhog," and the defendant's mark was deceptively similar.
  • The Assistant Registrar ruled in favor of the defendant.
  • The appellant then challenged this order before the learned Single Judge of the Delhi High Court, who upheld the Assistant Registrar’s decision and dismissed the petition.
  • The appellant subsequently filed the present appeal before a division bench of the Delhi High Court.
• Issues Involved:
  • Whether the trademarks “Shakti Bhog” and “Shiv Shakti” were deceptively similar?
  • Whether the use of religious symbols (Trishul and Damru) alongside the word “Shakti” created sufficient distinction?
• Appellant’s Arguments:
  • The appellant contended that the word “Shakti” was an essential and distinctive part of their trademark “Shakti Bhog.”
  • By adopting the term “Shakti” in their mark, the defendant was attempting to copy the essential feature of the appellant’s brand, leading to consumer confusion.
  • It was argued that even if the term “Shakti” was considered descriptive, it could not be separated from the registered trademark “Shakti Bhog” for comparison with “Shiv Shakti.”
  • The appellant also relied on the principle that where the essential features of a trademark are copied, the overall get-up, packaging, or additional words would not negate the deceptive similarity.
• Defendant’s Arguments:
  • The defendant countered that “Shakti” was a common descriptive word meaning “strength” or “power” and could not be monopolized.
  • They argued that their trademark “Shiv Shakti,” along with the religious symbols, had an entirely different meaning and visual representation compared to “Shakti Bhog.”
  • It was pointed out that their trademark included the prefix “Shiv” and the device of “Trishul” and “Damru,” which were associated with Hindu deity Lord Shiva. This religious connection distinguished it from “Shakti Bhog,” which had no such connotations.
  • The defendant also highlighted the phonetic and visual differences between the two marks. It was argued that their consistent use of “Shiv Shakti” for over 17 years without consumer complaints demonstrated that there was no likelihood of confusion.
• Discussion on Judgments and Legal Precedents:
  • The court examined several precedents on deceptive similarity and the importance of phonetic and visual differences in trademark disputes.
  • In American Home Products Corporation v. Mac Laboratories Pvt. Ltd., the Supreme Court held that trademarks should be considered in their entirety, and the addition of distinct elements could differentiate two otherwise similar marks.
  • In Fox & Co. (1920) 37 RPC 37, the court ruled that the trademarks "Motrate" and "Filtrate" were not similar despite a common suffix.
  • The Privy Council in Coca Cola Company of Canada Ltd. v. Pepsi Cola Company of Canada Ltd. (AIR 1942 PC 40) held that "Pepsi Cola" was not deceptively similar to "Coca Cola" since the distinctive feature was in the prefixes "Pepsi" and "Coca."
  • Applying these principles, the court determined that “Shakti Bhog” and “Shiv Shakti” were distinct due to their prefixes and accompanying visual elements.
• Reasoning and Analysis of the Judges:
  • The court noted that the word “Shakti” was a descriptive term and could not be monopolized by a single party. The essential features of the two trademarks were distinct.
  • The word "Shiv" in the defendant’s mark had religious significance and was combined with distinct visual elements that prevented consumer confusion.
  • The court also held that phonetic similarity alone was insufficient to prove deceptive similarity. The additional words “Bhog” and “Shiv,” combined with the religious imagery, created a clear distinction between the two brands.
  • Given the defendant’s long-standing use of the mark, the absence of consumer complaints, and the significant phonetic and visual distinctions, the court concluded that the trademarks were not deceptively similar.
• Final Decision:
  • The court dismissed the appeal, holding that “Shiv Shakti” and “Shakti Bhog” were not deceptively similar. It upheld the registration of “Shiv Shakti” in favor of Rudi Roller Flour Mills (P) Ltd.
• Law Settled in This Case:
  • This case reaffirmed that descriptive words cannot be monopolized in trademarks unless they acquire distinctiveness.
  • Phonetic similarity alone does not constitute deceptive similarity if the overall impression of the mark is distinct.
  • The presence of religious symbols and prefixes can contribute to differentiating a trademark from another similar-sounding mark.
  • Long-term, uninterrupted use of a trademark without consumer confusion strengthens the case for its distinctiveness and registration.

Case Title: Kewal Krishan Kumar Vs. Rudi Roller Flour Mills (P) Ltd. & Anr.
Date of Order: September 27, 2007
Neutral Citation: 2007(35) PTC 848(DEL), 
Court: Delhi High Court
Judges: Justice Mukundakam Sharma and Justice Sanjiv Khanna

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