Madras High Court
Mr. A.D. Padmasingh Isaac vs M/S. V.S. Traders on 25 February, 2022
Author: V.Bhavani Subbaroyan
Bench: V.Bhavani Subbaroyan
1 C.S.No.196 of 2010
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 25.02.2022
CORAM
THE HON'BLE MRS.JUSTICE V.BHAVANI SUBBAROYAN
C.S.No.196 of 2010
1. Mr. A.D. Padmasingh Isaac,
Trading as Aachi Spices and Foods,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai - 600 040.
2. M/s. Aachi Masala Foods (P) Ltd.,
No.6, Ground Floor,
15th Street, Anna Nagar, "G" Block,
Chennai - 600 040.
Represented by its Director,
Mr. Ashwin Pandian ...Plaintiffs
.Vs.
M/s. V.S. Traders,
No.2, Pari Street,
Anna Nedumpathai,
Choolaimedu,
Chennai - 600 094. ... Defendant
Plaint filed under Order IV Rule 1 of the Original Side Rules and
Order VII Rule 1 of C.P.C., r/w. Sections 27, 28, 29, 134 & 135 of the
Trade Marks Act, 1999 and Section 51, 54, 55 & 62 of the Copyright
Act, 1957, praying for a judgment and decree as follows:-
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2 C.S.No.196 of 2010
a) a permanent injunction restraining the defendant by itself, its
servants, agents, distributors, or anyone claiming through him from
manufacturing, selling, advertising and offering for sale using same and
similar get up, and colour scheme used by the Defendants shown in
Document No.2 or any other similar Trade Mark or in any media and use
the same in invoices, letter heads and visiting cards or by using any other
trade mark which is in anyway visually or deceptively or phonetically
similar to the Plaintiffs' trade mark AACHI MASALA-KULAMBU
CHILLY MASALA as shown in Document No.1 or in relation to any
masala items and use the same pouches, packets or use the mark in
invoices, letters heads and visiting cards or any other trade literature or
by using any other trade mark which is in any way visually, or
phonetically similar to the plaintiff's registered Trade Mark Nos.922594,
922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440,
1375757, 838786, 976559, 1025302, 1025304, 1025305, 1318493,
1318494, 1318495, 1375755, 1375756, 1380625, 1357284, 1479159,
1418281, 1025303, 1415328, 1415329 or in any manner infringe the
plaintiff's registered Trade Mark.
b) Directing the defendant to surrender to the plaintiffs all the
packing material, cartons, advertisement materials and hoardings, letter
heads, visiting cards, office stationery and all other materials
containing/bearing the name ANNAI MASALA-KULAMBU CHILLY
POWDER and packets in the Color Scheme and get up as shown in
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3 C.S.No.196 of 2010
Document No.2 or other deceptively similar trade mark used in the
pouches and packets in respect of masalas.
(c) directing the defendant to render an account of profits made by
them by the use of the impugned trademark and get up as shown in the
Document No.2 on the goods referred and decree the suit for the profits
found to have have been made by the Defendant, after the defendant has
rendered the accounts;
d) Directing the defendant to pay to the plaintiffs the costs to the
suit.
For Plaintiffs : M/s. Gladys Daniel
(for M/s. Daniel & Gladys Daniel)
For Defendant : Set ex-parte
********
JUDGMENT
The plaintiffs having Trademark in the name of 'AACHI' seek injunctive reliefs restraining the defendant by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using same and similar get up, and colour scheme used by the Defendant shown in Document No.2 or any other similar Trade Mark or in any media and use the same in 3 https://www.mhc.tn.gov.in/judis 4 C.S.No.196 of 2010 invoices, letter heads and visiting cards or by using any other trade mark which is in anyway visually or deceptively or phonetically similar to the Plaintiffs' trade mark "AACHI MASALA-KULAMBU CHILLY MASALA" as shown in Document No.1 or in relation to any masala items and use the same pouches, packets or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the plaintiff's registered Trade Mark Nos.922594, 922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440, 1375757, 838786, 976559, 1025302, 1025304, 1025305, 1318493, 1318494, 1318495, 1375755, 1375756, 1380625, 1357284, 1479159, 1418281, 1025303, 1415328, 1415329 or in any manner infringe the plaintiff's registered Trade Mark and directing the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter heads, visiting cards, office stationery and all other materials containing/bearing the name "ANNAI MASALA-KULAMBU CHILLY POWDER" and packets in the Color Scheme and get up as shown in Document No.2 or other deceptively similar trade mark used in the 4 https://www.mhc.tn.gov.in/judis 5 C.S.No.196 of 2010 pouches and packets in respect of masalas and directing the defendant to render an account of profits made by them by the use of the impugned trademark and get up as shown in the Document No.2 on the goods referred and decree the suit for the profits found to have been made by the Defendant, after the defendant has rendered the accounts.
2.According to the plaintiffs, the Plaintiff-1 commenced his business in the year 1995 as a proprietary concern with the objective of manufacturing and marketing various kinds of masalas and spices. Over the years, the plaintiffs have grown into one of the leading manufacturers and marketers of spices in India, by its sheer high quality and reliability and due to the enormous goodwill earned by the plaintiffs in the course of its business, by the tireless efforts put in and for promoting his products. The trade mark AACHI, has become now a common household name. At present the Plaintiffs are dealing in over 130 different products bearing the trademark AACHI. 5 https://www.mhc.tn.gov.in/judis 6 C.S.No.196 of 2010
3. It has been further submitted that the plaintiffs have now become one of the leading manufactures of packaged masalas. Because of the efforts undertaken by the plaintiffs in promoting and advertising their products through various mediums, their market share in these products have been considerably risen. The plaintiffs have put in enormous efforts, hard work and money towards advertising their products AACHI in all forms of media such as Radio, Newspapers, Hoardings, Magazines and Television networks. Certified copy of the plaintiffs Advertisement in RITZ Magazine is marked as Ex.P2. The plaintiffs have also received many prestigious awards for the quality of its products and customer service.
4. The learned counsel for the plaintiffs further submitted that in order to distinguish its various items of products from others adopted the trade mark AACHI for all its products and services. The expression "AACHI" has become very popular because of its continuous and substantial usage of this mark over a decade. This Trade Mark has become very popular and is a very valuable intellectual property of the 6 https://www.mhc.tn.gov.in/judis 7 C.S.No.196 of 2010 plaintiffs. No one can use the said expression "AACHI" for spices and masalas and other goods for which the plaintiffs are using the mark. The mark is unique and distinctive of the plaintiffs' goods and no one has used the Trade Mark "AACHI" for masala preparations and its allied preparations prior to the plaintiff-1.
5. It has been further submitted that among large varieties of masala preparations of plaintiffs, the subject matter of this proceedings is in respect of "AACHI KULAMBU CHILLY MASALA" label mark. This label mark is consisting of the word "AACHI" masala in yellow letters written in red background. Above the word "AACHI" masala a device of a multi coloured flying bird displayed inside the device of an oil drop in yellow background. Below this pictorial device, a device of a China plate, containing various ingredients of masalas and spices prominently displayed in various colours. This label as a whole is the registered well known trade mark of the plaintiffs. The Plaintiffs have honestly adopted the mark and have put in enormous amount of hard work and labour and invested huge sums of money, for advertisement 7 https://www.mhc.tn.gov.in/judis 8 C.S.No.196 of 2010 and sales promotional expenses. Because of the efforts made by the plaintiffs, the trade and the public, associate the mark with the plaintiffs and none else. The plaintiffs label is marked as Ex.P6.
6. The learned counsel for the plaintiffs would further submit that the plaintiffs have been using this mark "AACHI" with respect to almost all the masala preparations from the commencement of its business. As a result of the efforts undertaken by the plaintiffs, its turnover has been increasing substantially every year. Further, on acquiring enormous goodwill and reputation, the plaintiff in view of protecting its intellectual property, particularly, with respect to its trade mark applied for the registration for the trade mark 'AACHI MASALA KULAMBU CHILLY MASALA" for all over India under Registration No.1318495. Legal use certificate of Trademark No.1318495 in Class 30, dated 01.11.2004 is marked as Ex.P3. Since then the 1st plaintiff has become an exclusive owner of this label mark "AACHI" MASALA KULAMBU CHILLY MASALA. The Plaintiff'-1 has sole proprietary right over this mark, and any unauthorized use of the same mark or similar Trade Mark would 8 https://www.mhc.tn.gov.in/judis 9 C.S.No.196 of 2010 amount to infringement. Apart from the aforesaid application, the plaintiff-1 has also filed several applications for registration of the mark AACHI, in different classes, with respect to other description of goods in the same class and other classes. The Legal use certificates of Plaintiffs Trade Mark Nos. 922594, 922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440, 1375754, 1318493, 1318494, 1375756, 1380625, 1357284, dated 17.03.2008, 1025305 dated 17.03.2008 and 1375755 dated 27.03.2008 are marked as Ex.P5.
7. It has been further submitted by the learned counsel for the plaintiffs that by virtue of enormous efforts undertaken by the plaintiffs, the mark AACHI MASALA has become synonymous with the goods produced by then and none else. If any one other than the plaintiffs uses this mark on their goods, without the express consent of the plaintiffs, then it will amount to an infringement of the plaintiffs' registered mark. Apart from infringement, the use of the same mark or similar mark constitute falsification of Trade Mark, a cognizable offence punishable under the Act.
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8. The learned counsel for the plaintiffs would further submit that the hard work and effort undertaken by the plaintiffs in all these years for developing his brand has been met with a very positive response from the general public and traders. The plaintiffs' popularity and demand has been steadily increasing since the inception of its business from the year 1995. The trade mark is associated with plaintiff-1 and none else. While being so, in February, 2010, the plaintiffs came across the Defendants Kulambu Chilly Masala bearing the mark ANNAI MASALA- KULAMBU CHILLY POWDER marked as Ex.P11, in the same colour scheme and get up which is a blatant infringement of the plaintiffs' registered trade mark AACHI MASALA KULAMBU CHILLY MASALA. The Two are visually similar. It is a conscious copy. The defendant's product is available in all the places wherever the plaintiffs Aachi preparation of Kulambu Chilly Masala is marketed. The defendants Label consists of the words ANNAI MASALA- KULAMUBU CHILLY POWDER, written prominently, embossed in a red and yellow coloured label, an imitation of the Plaintiffs' colour combination in its wrapper. The defendants use of a strip of yellow, 10 https://www.mhc.tn.gov.in/judis 11 C.S.No.196 of 2010 bordering the word ANNAI MASALA KULAMBU CHILLY POWDER, displayed on a nearly identical device, is a blatant imitation of the Plaintiffs' wrapper bearing the mark AACHI MASALA-KULAMBU CHILLY MASALA. The copy is total consciously taken from the Plaintiffs' label with the intention of taking undue advantage of reaping the benefit without sowing. The Defendant's product is inferior in quality and substandard.
9. The learned counsel for the plaintiffs has described the similarities between the two marks used by the plaintiffs and the defendant as follows:
"(a) The prominent overall green background, similar font in a red background bearing the word ANNAI Masala, which is deceptively similar to the Trade Mark "AACHI".
Both the plaintiff's and defendant's mark are five letter words starting with the alphabet "A" and ending with "I" and moreover the defendant's mark is written in a similar font as that of Plaintiff's with the first letter "A" in capital. The words KULAMBU CHILLY POWDER is also deceptively similar to that of the plaintiffs.
(b) Below the impugned word mark and the device, is a picture of a plate containing the ingredients of various masalas and spices, it is visually similar to the mark used by the Plaintiffs. Even the designs made on the plate indicating the arrangement of spices have been imitated by 11 https://www.mhc.tn.gov.in/judis 12 C.S.No.196 of 2010 the defendant. For better appreciation of the above description the label of the defendant as used is affixed hereunder.
(c) On the other side of the Label the impugned mark is written in Tamil which is also imitation of Plaintiffs' label.
(d) Below the Tamil mark the picture of the vegetables is showed that is also imitation of Plaintiff's Label.
(e) The Defendant even copied the description for preparing Fish Curry, Dry Fish Curry, Egg Curry, Tomato Curry, Tamarind Curry, Kara Curry, Fenugreek Curry in the Plaintiff's Label.
(f) The Defendant has also copied the ingredients mentioned in the Plaintiff's Label in Tamil and English.
(g) The Defendant is selling the same 50gm Masala packet for Rs.8 whereas the Plaintiff being a leading manufacturer sells his 50gm Aachi Masala Kulambu Chilly Masala packet for only Rs.6.
(h) The defendant is selling his product with a shelf life of 6 months whereas the plaintiff is assuring a shelf life of 12 months for the same product."
10. It has been further submitted by the learned counsel for the Plaintiffs that if one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, will undoubtedly mistake the 12 https://www.mhc.tn.gov.in/judis 13 C.S.No.196 of 2010 defendants wrapper for the plaintiffs' if shown to him some time after the consumer had seen the plaintiffs'. Any purchaser who is desirous of getting a packet of AACHI MASALA-KULAMBU CHILLY MASALA will buy ANNAI MASALA-KULAMBU CHILLY POWDER. The defendant's mark is a five letter word starting with the Alphabet "A" and ending with "I" which is similar to that of the Plaintiff and moreover the Defendant's mark is written in a similar font as that of Plaintiffs' with the first letter "A" in capital. In the instant case the unwary purchasers of average intelligence with the imperfect re-collection will undoubtedly will mistake one for the other. Hence, infringement of Trade Mark is total. Where the similarity of the two marks between the Plaintiffs and Defendant is such that the second mark is consciously copied, no further evidence is required for the grant of injunction. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. It would be enough if the impugned mark bears such an overall similarity to the mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this 13 https://www.mhc.tn.gov.in/judis 14 C.S.No.196 of 2010 case, the wrappers are practically the same, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. Further it has been submitted that the Defendant's wrapper is a blatant imitation of the plaintiffs' colour scheme and get up and the same has been adopted for evil intention of commercial gain for which the defendant is not entitled under the Law.
11. The learned counsel for the plaintiffs would further submit that the defendants are using the deceptively similar mark of the plaintiffs. The use of the trade mark ANNAI MASALA-KULAMBU CHILLY POWDER is bound to create confusion and deception in the market. The Trade Mark and General public will assume that there is a business relationship between the Plaintiffs and the defendant, where there is no such relationship exists. However, the mark of the defendant is deceptively similar to that of the plaintiffs' registered Trade Mark, causing confusion among the minds of the trade and general public at large.
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12. It has been further submitted by the learned counsel for the plaintiffs that the Plaintiffs have been carrying on business using the trade mark AACHI, with respect to masalas since 1995. The defendant is recent entrants into this field. Considering these facts, as a prior user and a registered trade mark owner, the plaintiffs have exclusive right to the Trade Mark AACHI, including its distinctive colour scheme and get up.
13. The learned counsel for the plaintiffs would further submit that the products manufactured by both the plaintiffs and the defendant are being sold through the same trade channels. The defendant is deemed to have knowledge of the nature and scope of the plaintiffs' business and manufacturing activities, bearing the trade mark AACHI MASALA- KULAMBU CHILLY MASALA (Label) and its get up. Hence the adoption and use of the impugned mark and the label amounts to fraud under the Trade Marks Act.
14. It has been further submitted that the defendant has no valid reasons whatsoever to use the mark ANNAI MASALA -KULAMBU 15 https://www.mhc.tn.gov.in/judis 16 C.S.No.196 of 2010 CHILLY POWDER which is visually and deceptively identical to that of the plaintiffs. It is clear from the manner in which the defendant has adopted the said mark that it could not have been an innocent coincidence. Hence, it makes clear that the Defendant's act is dishonest and motivated purely by mala-fide intention to poach upon the reputation and good will enjoyed by the plaintiffs. Therefore, the defendant should not be allowed to malign and dilute the goodwill and reputation enjoyed by the plaintiffs since the conduct of the defendant amounts to falsification of Trade Mark an offence punishable under the Trade Marks Act, 1999 apart from action of infringement f the plaintiffs' registered trade mark and passing off. Hence, this Court may be pleased to decree the suit in C.S. No.196 of 2010 as prayed for.
15. Though the defendant was served in the year 2016, the defendant has not entered appearance to contest the claim. Hence, the defendant was set ex-parte and hence ex-parte evidence was ordered by this Court on 10.08.2021.
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16. One Mr.B. Gnanasambandam, General Manager - Legal & Statutory of the 2nd plaintiff's company has been examined as PW1. He has filed the proof affidavit for his chief examination and receipt of 11 documents as documentary evidence to prove his claim. In the ex-parte evidence, the certificates of the registration of the Trademark have been marked as Ex.P5, the legal use certificates of Trade Mark have been marked as Ex.P3 & Ex.P.4, the Certificate of Commercial Tax Registration of Aachi Masala & Foods (P) Ltd. dated 10.07.2006, the Certificate of Commercial Tax Registration and Central Sales Tax of Aachi Spices and Foods dated 28.12.2006 and 03.01.2007 and the photo copy of Trademark License user agreement between Mr.A.D. Padmasingh Isaac trading as Aachi Spices and Foods and Aachi Masala Foods Pvt. Ltd. dated 01.04.2007.
17. A perusal of the above documents demonstrates that the plaintiff-1 is the Proprietor of the Trademark 'AACHI MASALA - KULAMBU CHILLY MASALA' written in a particular manner and printed with a particular colour scheme. The plaintiffs are carrying on business under the name and style of "AACHI MASALA-KULAMBU 17 https://www.mhc.tn.gov.in/judis 18 C.S.No.196 of 2010 CHILLY MASALA" with the aforesaid specific markings, which got registered as a Trade Mark under the Trade Marks Act. The relevant copies of the same have been marked to prove it. While so, the defendant under the name and style of "ANNAI MASALA-KULAMBU CHILLY POWDER" printed deceptively the registered Trade Mark of the Plaintiffs. The copies of the wrapper and packing material of the defendant has been produced as Ex.P11. A perusal of these documents would show that the manner in which the letters are written and the colour scheme of the wrappers and packing materials of the defendant are substantially similar to that of the plaintiffs and are capable of causing confusion in the minds of the consumers, regarding the identity of the manufacturer. It is also seen that the deceptive similarity would definitely create a confusion in the minds of the consumer who is a person of average intelligence with imperfect recollection. There is a very strong likelihood of the goods of the defendant being passed off as the goods of the plaintiffs, if the injunctive reliefs are not granted. Further, this Court by its order dated 01.03.2010 has granted interim injunction till 08.03.2010. Thereafter, as there was no representation for 18 https://www.mhc.tn.gov.in/judis 19 C.S.No.196 of 2010 the defendant and no objection was forthcoming from the respondent, interim injunction was made absolute by order dated 22.03.2010 of this Court. In the light of the above conclusion, this Court is of the opinion that the plaintiffs are entitled to a decree as prayed for in the suit.
18. The suit is therefore decreed as prayed for. The plaintiffs would be entitled to costs of the suit also. Consequently, the connected applications are closed.
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List of the witnesses examined on the side of the plaintiff:
PW1 – Mr.B. Gnanasambandam List of Exhibits marked on the side of the plaintiffs :
Sl.No Exhibits Description of documents
1 Ex.P1 The original Authorization letters dated 03.09.2021
2 Ex.P2 The certified copy of the Plaintiffs Advertisement in
RITZ Magazine
3 Ex.P3 The copy of the Legal use certificate of Trademark
No.1318495 in Class 30, dated 01.11.2004 (marked after comparing with the original, verified & returned) 4 Ex.P4 The series of photocopies of the Legal Use certificate of Trade Mark Nos.922594, 922595, 1374937, 1340324, 1340325, 1367430, 1372439, 1372440, 1375754, 1318493, 1318494, 1375756, 1380625, 1357284, dated 18.06.2006 and 10.02.2006 (marked after comparing with the original, verified & returned) 14 documents.
5 Ex.P5 The series of photocopies of the Registration Certificate of Trade Mark Nos.838786 dated 23.08.2008, 976559 dated 17.03.2008, 1025305 dated 17.03.2008 and 1375755 dated 27.03.2008 (marked after comparing with the original, verified & returned) 4 documents.
6 Ex.P6 The original Plaintiffs' label Aachi Masala Kulambu Chilly Masala 7 Ex.P7 The photocopy of the Certificate of Incorporation of Nazareth Foods Private Limited dated 23.07.2001 (marked after comparing with the original, verified & returned) 20 https://www.mhc.tn.gov.in/judis 21 C.S.No.196 of 2010 Sl.No Exhibits Description of documents 8 Ex.P8 The photocopy of the Certificate of Commercial Tax Registration of Aachi Masala & Foods (P) Ltd. dated 10.07.2006 (marked after comparing with the original, verified & returned) 9 Ex.P9 The series of the Certificate of Commercial Tax Registration and Central Sales Tax of Aachi Spices & Foods dated 28.12.2006 and 03.01.2007 (marked after comparing with the original, verified & returned) 3 documents.
10 Ex.P10 The photocopy of Trademark License user agreement between Mr. A.D. Padmasingh Isaac trading as Aachi Spices Spices and Foods and Aachi Masala Foods Pvt.
Ltd dated 01.04.2007 (marked after comparing with the original, verified & returned) 11 Ex.P11 The original defendant's Label ANNAI MASALA KULAMBU CHILLY POWDER.
3. List of Witnesses examined on the side of the defendant:-
Nil
4. List of Exhibits Marked on the side of the defendant:-
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