Bangalore District Court
M/S. Nandhini Deluxe vs M/S. Nandini Veg on 11 June, 2020
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE, AT
BANGALORE CITY. [CCH.NO.10]
Dated this the 11th day of June 2020
PRESENT
Sri.SADANANDA NAGAPPA NAIK, B.A.L., LL.B.
XVIII Addl.City Civil Judge.
O.S.No.4514/2015
Plaintiff M/s. Nandhini Deluxe,
114/1(114(2),
Lalbagh Fort Road,
Minerva Circle,
Bangalore - 560 004.
Reptd by its Managing
Partner N.Ananda,
S/o Late N.Narasimhaiah,
Aged about 70years,
(Rep. by Sri H.S.H., Adv.)
/VS/
Defendant: M/s. Nandini Veg,
RBTGTC Building
Railway Station Road,
Bangalore - 23.
Reptd. By its Proprietor,
Mr.Maralli Udaya Kumar
Shetty
(By Sri.H.G.S., Advocate)
Date of institution of 30-05-2015
suit
Nature of the (suit or Permanent injunction,
2 O.S.No.4514/2015
pronote, suit for render accounts, surrender
declaration and unused stocks and for
possession suit for damages.
injunction,) etc.
Date of the 16.01.2018
commencement of
recording of the
evidence.
Date on which the 11.06.2020
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 05 00 11
(M.PANCHAKSHARI)
XVIII Addl.City Civil Judge,
Bangalore.
JUDGMENT
The present suit is filed by the plaintiff for grant of permanent injunction restraining infringement, passing off, to surrender the stock of unused offending bills, negatives, positives, transpencies, block for destruction to the Plaintiff, to render true accounts of the profits, to order for damages of Rs.25000/- per month and cost of this suit against the defendant u/s.134 of Trademarks Act.
3 O.S.No.4514/20152. The brief facts of the plaintiff's case as pleaded in the plaint is as follows:
The Plaintiff is a registered partnership concern carrying on business of Andhra Style Vegetarian & Non- vegetarian Restaurant. The Plaintiff is using the Trade mark NANDHINI in respect of said business since 1989. The artistic work, design and get-up in respect of trade mark NANDHINI exclusively belongs to them. On account of intrinsic value, salesmanship and quality of food prepared by them, their trade mark has become popular all over South India. The Trademark and Copyright in respect of NANDHINI exclusively belongs to the Plaintiff. They are running 12 branches at Bangalore. They also registered their trade mark NANDHINI and NANDHINI DELUXE under class 42, under various numbers 1294121, 1284398, 1284399, and 1360905. The same has been registered under the Copy right Act 1957 under No.A-62848/2002. Plaintiff further submits that the Defendant has commenced his business under the name NANDINI VEG. The action of the Defendant to adopt the trademark NANDINI VEG is fraudulent, illegal, contrary to law and unauthorized and calculated to deceive the customers and perverse, illegal 4 O.S.No.4514/2015 and amounts to an act of deceit. The trade mark NANDHINI VEG is structurally, phonetically and visually similar to Plaintiff's registered Trademark. Defendant has no authority or right to use the trading style NANDINI VEG for running restaurant. Since the Plaintiff and Defendant are engaged in business of providing food, the adoption of trade name NANDINI VEG by Defendant is causing confusion among the customers and it also amounts to infringement and passing off under Trademarks Act. The Plaintiff has issued a legal notice dtd.31.3.2015 calling upon the Defendant to cease and desist from using Trademark NANDINI VEG. The Defendant has sent a reply dtd.18.4.2015 denying the allegations and refused to comply with the demand enumerated in the notice. Hence the suit is filed for the above reliefs.
3. In pursuance to the suit summons, the Defendant appeared through its counsel and filed written statement denying the plaint averments and further contended that the suit is not maintainable either under law or on facts. It lacks bonafides bereft of merit and liable to be dismissed in limine. The Plaintiff has approached this court with unclean hands. The Plaintiff is not entitled for any suitable reliefs. The 5 O.S.No.4514/2015 person who has signed and verified the suit has no authority to do so. Defendant also contended that the name and style of establishment of the Defendant is nothing to do with the establishment of the Plaintiff. The artistic work , design and getup with specially design font, with dots inserted in each of the alphabet by name NANDHINI DELUXE are not similar in any manner with that of the Defendant's concern name. That the Defendant do not aware that the Plaintiff is running 12 branches in and around Bangalore. The Defendant has also contended that M/s. Karnataka Milk Federation Corporation (KMFC) has initiated the proceedings against the Plaintiff before the competent authority and before the Hon'ble High Court of Karnataka. The Hon'ble High Court of Karnataka has nullified the Trademark claimed by the Plaintiff in WP.No.37192/2013 to 37195/2013. Hence, the Plaintiff do not have any right whatsoever to claim the Trademark or Copyright in its favour. The Defendant has also contended that the Defendant's trade name do not have any similarity with that of the Plaintiff's name. The Defendant has obtained necessary license from competent Government Authority and doing its business since last 3 years without any complaints from any one else. The mere naming the business concern with NANDINI VEG will not violates 6 O.S.No.4514/2015 the Trademarks Act. The Plaintiff is simply harassing the Defendant for unlawful gain. The sales turnover of the Plaintiff is imaginary and concocted. The name of the Defendant concern is very common in general public. The Defendant is running purely a Udupi Style Vegetarian hotel and is nothing to do with the business of the Plaintiff like Andhra style food. This Defendant is not at all using the label, phamphets, brochure, or advertising the business to canvas the business of the Plaintiff. There is no cause of action to file the suit. The Plaintiff has also suppressed the proceedings initiated by the KMFC. The court fee paid is improper. On the above said grounds the Defendant prays to dismiss the suit.
4. On the basis of the above pleadings my predecessor in office has framed the following issues
1. Whether the Plaintiff proves that it is the registered owner of Trademark NANDINI DELUXE / NANDHINI?
2. Whether the Plaintiff proves that the Defendant had infringed the Plaintiff's well established Trademark NANDINI VEG?
3. Whether the Plaintiff proves that the Defendant has passed off their Trademarks NANDHINI DELUXE?
4. Whether the Plaintiff is entitled for the decree of permanent and mandatory injunctions as sought for?
7 O.S.No.4514/20155. Whether the Plaintiff is entitled for the damages as sought for?
6. What Order or Decree?
5. The Plaintiff in order to substantiate their contention got examined its managing partner as PW1, got marked the documents at Ex.P1 to 15. On the other hand the proprietor of the Defendant is examined as DW1 and not produced any documents.
6. I have heard the learned counsel for the Plaintiff and Defendant. The learned counsel for the Plaintiff has cited plethora of cases:
1. MANU/SC/0004/1940 - Purushottam Umedbhai & Co.Vs. Manilal and Sons
2. MANU/DE/3204/2017 - RJ Component and Shafts Vs. Deepak Industries Limited and Others.
3. MANU/DE/2235/2011- Creaves Cotton Limited Vs. Mohammad Rafi and others.
4. MANU/SC/0197/1964 - Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories
5. MANU/MH/1004/2011- Hindustan Unilever Limited Vs. Ashique Chemicals and others.8 O.S.No.4514/2015
6. MANU/WB/0997/2015 - Assam Roofing Ltd and others Vs. JSB Cement LLP and others.
7. MANU/SC/0779/2018- Nandhini Deluxe Vs. Karnataka Co-operative Milk Producers Federation Ltd
8. MANU/TN/0970/2016- Sun Pharmaceuticals Industries Limited Vs. Cadila Healthcare Ltd and others.
9. MANU/TN/0167/1969 - The Andhra Perfumary Works Joint Family Concerns Vs. Karupakul Suryanarayaniah and others.
The learned counsel for the Defendant has cited the following cases:
1. AIR 2009 Himachal Pradesh 10 - Naranjan Chauhan Vs. State of H.P.& Others
2. AIR 2002 Kerala 33 - M/s. Popular Automobiles Vs. GK.Chami
3. (2018) 9 SCC 183 - Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd.
In fact the law pronounced on these judgments have become axiomatic and the same has been applied by me in the appreciation of the relevant material on record.
7. I answer the above issues are as follows:
Issue No.1: In the affirmative 9 O.S.No.4514/2015 Issue No.2: In the affirmative Issue No.3: In the affirmative Issue No.4: In the affirmative Issue No.5: In the negative Issue No.6: As per final order, for the following:
REA S ON S
8. Before adverting to the appreciation of evidence on each issues let me analyse the legal position with regard to the suit on infringement or passing off of Trademark.
9. The Parliament by virtue of Article 246(1) and entry No.49, List-1- Union List in the 7 th schedule of Constitution of India makes the law relating to the Trademark as it is a exclusive domain of Central Government to pass a legislation on trademark. Prior to the first enactment of the Trademark Act 1940, the Trademark Suits were governed by Common Law. The Trademarks Act was repealed by Trade and Merchandise Act 1958. Thereafter, it was revised by Trademark Act 1999, Trademark Rules 2002 & 2017 to make it compliance with TRIPS obligations. A Trademark is a sign capable of distinguishing goods or service of one enterprise from those of other enterprise. The definition 10 O.S.No.4514/2015 of the Mark defined under the Trademark Act is not exhaustive. It includes a letter, word, heading, numeral, brand, device, signature etc. Any person claiming to be the proprietor of the Trademark can file an application for Trademark in his name, partner of the firm, any company, any Government Department, a trust or joint applicants. Once the application is made to Trademark registry, and after resolving the objections if any, the Trademark is registered and published in Trademark Journal. The registration is initially valid upto 10 years and renewal for subsequent period of 10 years and so on. The registration can also be cancelled or revoked on several grounds.
10. It is also settled principle of law that a registered owner of the Trademark can bring a composite suit for both infringement and passing off. However unregistered user remedy is only a common law remedy for passing off. In a suit by a registered Trademark owner against an unregistered Trademark owner, defendant can always defend the suit by showing that he is the prior user and also can restrain the act of the Plaintiff. A registered or unregistered Trademark can also be assigned or transmitted with or without the goodwill of business. For the infringement action the 11 O.S.No.4514/2015 Plaintiff has to establish that the offending mark is identical and deceptively similar to registered Trademark. A unregistered Trademark owner can also file a suit against the registered Trademark owner for passing off. Hence the suit for infringement or passing off depends upon the concept of prior user. The court can also grant injunction, award damages, order for account of profits along with delivery of infringed materials, for destruction or eraser depending on the facts and circumstances of each case.
11. Though Sec.27(1) prohibits infringement suit by unregistered Trademark owner, Sec.27(2) provides for passing off action. The Sec.28 of the Act confers right on a registered owner. There is also mandatory provision u/s.29(3) that offending mark identity with the registered Trademark goods and services are likely to cause confusion in the mind of the public or which is likely to have association with the registered Trademark. Sec.34 also protects the interest of prior user. Sec.57 provides for powers to cancel or vary, the Trademark by the appellate board. Sec.124 provides for stay of proceedings. Sec.134 provides for filing of suit before the District Courts. Sec.135 provides for relief which may be granted 12 O.S.No.4514/2015 for passing off. Keeping the above principles in mind let me analyse each issues.
12. Issue No.1: The Plaintiff in his pleading has contended that it is a registered partnership concern carrying on business of Andhra Style vegetarian & Non- vegetarian restaurant. The Plaintiff's have been using the Trade Mark NANDHINI in respect of said business since 1989. The artistic work, design and get-up in respect of Trade Mark NANDHINI exclusively belongs to them. On account of intrinsic value, salesmanship and quality of food prepared by them, their Trade Mark has become popular all over south India. The Trademark and Copyright in respect of NANDHINI exclusively belongs to the Plaintiff. They are running 12 branches at Bangalore. They also registered their Trade Mark NANDHINI and NANDHINI DELUXE under class 42, under various numbers 1294121, 1284398, 1284399, and 1360905. The same has been registered under the Copy right Act 1957 under No.A-62848/2002.
13. To substantiate its claim as to registered Trademark the Plaintiff in his evidence has also reiterated the plaint averments with regard to the registration of the Trademark and has relied on Ex.P7 to 13 O.S.No.4514/2015
10. Ex.P7 the legal use certificate issued by Trademark registry with regard to Trademark No.1284398 in class 42 providing of food and drink, temporary accommodation for the word mark of NANDHINI. Used since 31.12.1989 in the name of Plaintiff (N.Anand) which is valid upto 13.5.2024. Ex.P8 the legal use certificate issued by Trademark registry with regard to Trademark No.1284399 in class 42 providing of food and drink, temporary accommodation for the word mark of NANDHINI DELUXE DEV. Used since 31.12.1989 in the name of Plaintiff (N.Anand) which is valid upto 13.5.2024. Ex.P9 the legal use certificate issued by Trademark registry with regard to Trademark No.1360905 in class 42 providing of food and drink, temporary accommodation for the word mark of HOTEL NANDHINI(LOGO). Used since 17.4.2002 in the name of Plaintiff (N.Anand) which is valid upto 1.6.2025. Ex.P10 the legal use certificate issued by Trademark registry with regard to Trademark No.1294121 in class 42 providing of food and drink, temporary accommodation for the word mark of NANDHINI (LABEL). Used since 31.12.1989 in the name of Plaintiff (N.Anand) which is valid upto 1.7.2024. Ex.P1 dtd.5.11.2002 issued by Deputy Register of Copyright shows that N.Anand is the owner of the artistic word NANDHINI.
14 O.S.No.4514/201514. In response to first issue the defendant in his written statement has contended that the Plaintiff has not produced any documents to show its Trademark publication in a journal. The word NANDHINI is a sacred word it can be used by any one. No one can claim exclusive claim over the word NANDHINI. On the date of filing the suit, there was a case pending against the Plaintiff by KMFC in IPAB No.MP.47/10, MP.53/10. Therefore,he did not have any right to file a suit against the Defendant. Hence, prayed this court to dismiss the suit on this ground alone.
15. The defendant has also contended that the Plaintiff has no authorisation to file the suit. There is no resolution of partnership firm filed by the Plaintiff to represent the suit by the Plaintiff. The counsel for the Defendant has also argued that the Plaintiff has not produced any document to show that it is a partnership firm. There is a bar contending Sec.69(2) of Partnership Act. Unregistered firm cannot sue. Hence prayed this court to dismiss the suit at the threshold. The learned counsel for the defendant has relied on para 14 of the decision reported in AIR 2009 Himachal Pradesh 10 -
15 O.S.No.4514/2015Naranjan Chauhan Vs. State of H.P.& Others wherein it is held as follows:
Partnership Act .S.69(2)- Effect of non- registration - Bar of S.69(2)- Pleadings - Plea that suit was barred by S.69 not specifically pleaded in written statement, but it was specifically mentioned that suit was not maintainable - Once plea was taken that the suit was not maintainable, plaintiff was not taken by surprise and he was well aware of question being raised - it cannot be said that this plea cannot be considered until and unless it was specifically pleaded- plea being legal one can be raised at any stage. (PARA 14) Further he had relied on the decision reported in AIR 2002 Kerala 33 - M/s. Popular Automobiles Vs. GK.Chami wherein it is held as follows:
Partnership Act S.69(1) Firm- Suit on behalf of - plaint signed by manager of firm as authorised by one of its partners - His name not shown as partner in register of firms- Nor power of attorney given by firm to him to verify and sign plaint on behalf of firm - Very institution of suit is bad for non-compliance of mandatory provisions.
Further he had relied on para 7 of the decision reported in (2018) 9 SCC 183 - Nandhini Deluxe Vs. Karnataka Cooperative Milk Producers Federation Ltd., wherein plaintiff/ appellant had argued that " the trade 16 O.S.No.4514/2015 mark NANDHINI is not an invented word and, therefore, there was no question of copying the trademark of the respondent. The word NANDHINI represents the name of goddess and a cow in Hindu Mythology. The trademark NANDHINI is used by people from all walks of life and it is also referred in Puranas and Hindu mythological stories. Large number of people worship NANDHINI as a goddess and, therefore, the respondent cannot claim monopoly over the word NANDHINI." Therefore it was submitted by the leaned counsel that the plaintiff is bound by the argument that has been made before the Hon'ble Supreme Court and cannot claim exclusive right over the word NANDHINI.
16. I have perused the entire decision, in the above said matter the appellant had challenged the order of Hon'ble High Court and IPAB. The Hon'ble Apex Court restored the order of Deputy Registrar granting registration in favour of the appellant / plaintiff. Therefore, it shows that the registration of trade name NANDHINI DELUXE is still valid and the contention by the learned counsel for defendant that the plaintiff/appellant while arguing before the Hon'ble Apex Court had contended that no one had exclusive right over the word NANDHINI, the said argument is not relevant as 17 O.S.No.4514/2015 it is a mere argument and not a ratio laid down by the Hon'ble Supreme Court.
17. The counsel for the Plaintiff in his argument relied on the ruling in MANU/SC/0004/1960 - Purushotham Umed Bai case. Wherein the Apex Court in para 12 held as follows:
It is clear from this provision of the Act that the word " firm " or the " firm name " is merely a compendious description of all the partners collectively. It follows, therefore, that where a suit is filed in the name of a firm it is still a suit by all the partners of the firm unless it is proved that all the partners had not authorized the suit. A firm may not be a legal entity in the sense of a corporation or a company incorporated under the Indian Companies Act it is still an existing concern where business is done by a number of persons in partnership. When a suit is filed in the name of a firm it is in reality a suit by all the partners of the firm. If 0. XXX had not been introduced into the Code and a suit had been filed in the name of a firm it would not be a case of a suit filed by a nonexistent person. It would still be a suit by the partners of a firm, the defect being that they were described as a firm. In order to clarify matters a court would permit an amendment by striking out the name of the firm and replacing it with the name of the persons forming the partnership. It would be a case of misdescription. Even if the provisions of 0. 1, r. 10 and 0. VI, r. 17 did 18 O.S.No.4514/2015 not strictly apply the amendment could be permitted under s. 153 of the Civil Procedure Code because it was not a case of either adding parties or substituting parties. The High Court referred to a number of decisions to which no particular reference need be made but they do support the view taken by the High Court that in the present case the Plaintiff described in the plaint as the firm of Manilal & Sons was a mere misdescription capable of amendment and not a case where a plaint had been filed by a non-existent person and therefore a nullity.
The Plaintiff has also contended that the Trademark registration certificate are stands in the name of N.Anand trading as NANDHINI. The very suit is filed by N.Anand, hence the suit is maintainable and prayed to allow the suit.
18. I have carefully perused the pleadings of both parties and the rulings relied and heard the arguments on the point. On the perusal of Ex.P7 to 10 it clearly shows that the trademark NANDHINI is used since 31.12.1989 the same is in the name of plaintiff N Anand which is valid upto 13.5.2024. Sec.2(1)(v) defines the registered proprietor as in relation to a trademark means the person for the time being entered in the register as proprietor of the trademark. Sec.2(1)(b) defines the registered trademark as a trademark which is actually on 19 O.S.No.4514/2015 the register and remaining in force. On perusal of the Ex.P7 to 10 it clearly shows that the word NANDHINI is the registered trademark which found on the register and remained in force and N.Anand is the registered proprietor whose name has been entered as proprietor in the register of the trademark. This fact has not been rebutted by the defendant. As per Sec.91 of the Indian Evidence Act states that when the terms of the contract or of a grant or of any other disposition of property have been reduced to the form of a document and it all case in which any matter is required by law to be reduced in the form of a document no evidence shall be given in proof of term of contract, grant or other disposition of property of such matter except the document itself or secondary evidence of its contents, in cases in which secondary evidence is admissible under the provisions herein before contended. Even in this case also the law requires that the trademark has to be registered for its effective action against infringement and passing off. When the trademark is registered and the trademark certificate itself is produced, the defendant cannot introduce any oral evidence to disprove the fact.
19. I have also perused the Sec.69(2) of the Partnership Act 1932 in which it states that no suit to 20 O.S.No.4514/2015 enforce a right arising from a contract shall be instituted in any court by or on behalf of a firm against any third party unless the firm is registered and the persons suing are have been shown in the register of firms as a partners in the firm. From the above said provision it makes cleat that in a normal suit which would arise from a contract it is only the registered firm which can file a suit. It is a settled principle of law as enunciated by Hon'ble Supreme Court in Haldircon Bhujiawala v Anand Kumar Deepak Kumar - 2000 (3) SCC 250. It is well settled that a passing-off action is a common law action based on tort. Therefore, a suit for perpetual injunction to restrain the defendants not to pass off the defendants' goods as those of the plaintiffs by using the plaintiff's trademark and for damages is an action at common law and is not barred by Section 69(2). Likewise, if the relief of permanent injunction or damages are being claimed on the basis of a registered trademark and its infringement, the suit is to be treated as one based on a statutory right under the Trade Marks Act and is not barred by Section 69(2). Therefore, in both these situations, the unregistered partnership in the present case cannot be said to be enforcing the right 'arising from a contract'. Therefore, the rulings relied upon by the defendant in AIR 2009 HP 10 & AIR 2002 Kerala 33 are not applicable to 21 O.S.No.4514/2015 the facts and circumstances of this case. As the plaintiff has proved the ownership of trademark by producing the legal use certificates which was in existence from 1989 and at the time of filing the suit though Ex.P1, 7 to 10. Hence, I answer the issue No.1 in the affirmative.
20. Issue No.2 & 3 : Since these two issues are interlinked they are taken up together to avoid repetition. The Plaintiff in order to substantiate its claim the Plaintiff has contended in its plaint that the Defendant has commenced their restaurant by name NANDINI VEG by using the Plaintiff's well established Trademark NANDHINI DELUXE. The action of the Defendant is fraudulent, illegal and contrary to law and unauthorised and calculated to deceive the customers. The Plaintiff has also reiterated the plaint averments in his evidence with reference to use of the registered Trademark by the Defendant. The Plaintiff has relied on the Ex.P11 & P12 the bills, Ex.P13 & 14 the photograph showing the name of Defendant as NANDINI VEG. In Ex.P11 & 12 are the bills wherein it is written with heading NANDINI VEG. The plaintiff has also relied upon the reply notice send to the plaintiff to its legal notice dtd.31.3.2015 Ex.P4 the defendant in its reply dtd.18.4.2015 as per Ex.P6 in para 2 of the said notice 22 O.S.No.4514/2015 has contended that the defendant's trade name NANDINI VEG is not similar to NANDHINI DELUXE Restaurant and it is common in general and used by the public. The defendant in his written statement which was filed on 3.11.2016 has also contended that the plaintiff's name NANDHINI DELUXE and the defendant's trade name NANDINI VEG are not one and the same, both are different. The plaintiff has also relied upon affidavit of defendant in lieu of examination in chief wherein the defendant has admitted that he is running a Udupi Style Vegetarian self service restaurant by name NANDINI VEG. Even in his cross examination on 18.12.2019 also the defendant has deposed that "it is correct to suggest that I am still running a hotel by name NANDINI VEG".
21. The Plaintiff in his argument has contended that the Plaintiff's business is located near Bangalore railway station. The Defendant is also running a business of similar business near Plaintiff's business. There are many commuters who come from bus stop and railway station and other places. Hence, there are chances of mislead by the Defendant's trade name NANDINI VEG. The goodwill of the NANDHINI DELUXE has been used by the defendant. The Defendant in its written statement has contended that the word NANDHINI is sacred, the 23 O.S.No.4514/2015 counsel has also argued that the word NANDHINI is used by many people in and around Bangalore, the Defendant is running a small canteen and its Trademark is not deceptively similar to the registered Trademark of the Plaintiff. The word NANDHINI DELUXE and NANDINI VEG are completely different, it will not mislead any customers and also contended that the Plaintiff is serving Andhra Style Food and the Defendant is serving Udupi Style Food. So there is no confusion in the mind of the public.
22. I have perused the contention of both the parties in their pleadings and perused the deposition of Plaintiff and Defendant in entirety. The facts that emerge from the pleadings, depositions, and documents are that the fact that the Defendant is running a business NANDINI VEG since 2013. Hence, it is undisputed that they were running the business under the name and style of NANDINI VEG. Since the defendant has admitted running of NANDINI VEG no further evidence is required by the plaintiff to show that the defendant is running a hotel in the name and style of NANDINI VEG. Sec.58 of Indian Evidence Act states that the facts admitted need not be proved. The very provision is aptly applicable to this case. Even the word NANDINI contained in Ex.11 to 24 O.S.No.4514/2015 14 ie., bills of the defendant's, trademark and name board are phonetically and deceptively similar to Ex.P2 & 3 ie., menu card and plastic carry bag of the plaintiff.
23. The law relating to suit against infringement and passing off of the trademark is well settled. The Hon'ble Supreme Court in Bhavnesh Mohanlal Amin v. Nirma chemicals Works Ltd n 2005 (9) Scale 158 held that the trademark NIMA is deceptively similar to the registered trademark NIRMA in appearance as well as pronunciation and hence amounts to infringement and hence upheld the decision of the trial court of granting injunction.
In Ruston and Hornby Limited v. Zamindara Engineering Company (1969) 2 SCC 727 : AIR 1970 SC 1649, has observed that gist of a passing off action is that A is not entitled to represent his goods as the goods of B in the minds of customers.
In Halsbury (Trade Marks, 4th Edn., 1984, Vol. 48, para 187) says that in a passing-off action the degree of similarity of the name, mark or other features concerned is important but not necessarily decisive, so that an action for infringement of a registered trade mark may 25 O.S.No.4514/2015 succeed on the same facts where a passing-off action fails or vice versa.
As to vice versa, Kerly says ((Kerly, Law of Trade Marks and Trade Names, 11th Ed. 1983, para 16.12), an infringement action may fail where the plaintiff cannot prove registration or that its registration extends to the goods or to all the goods in question or because the registration is invalid and yet the plaintiff may show that by imitating the mark or otherwise, the defendant has done what is calculated to pass off his goods as those of the plaintiff.
The House of Lords in the case of Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873 has restated three elements of passing off. I.e., Reputation, Misrepresentation and Damage to goodwill are also known as the CLASSICAL TRINITY. It was stated in this case that in a suit for passing off the plaintiff must establish firstly, goodwill or reputation attached to his goods or services. Secondly, he must prove a misrepresentation by the defendant to the public i.e. leading or likely to lead the public to believe that the goods and services offered by him are that of the plaintiff's. Lastly, he must demonstrate that he has 26 O.S.No.4514/2015 suffered a loss due to the belief that the defendant's goods and services are those of the plaintiff's.
In Schweppes Ltd. v. Gibbens 1905 22 RPC 601 HL Lord Halsbury said, while dealing with a passing-off action that the whole question in these cases is whether the thing taken in its entirety, looking at the whole thing is such that in the ordinary course of things a person with reasonable comprehension and with proper insight would be deceived.
In a Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd.. 2001 5 SCC 73 (Three Judges
Bench) Hon'ble Supreme Court, summed up the position of law regarding tests to determine a passing-off action, with the following observations: (SCC pp. 88 & 95, paras 18 & 35-37) We are unable to agree with the aforesaid observations in Dyechem case. As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 SC 449, Durga Dutt Sharma case Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 27 O.S.No.4514/2015 980, and Hoffmann-La Roche & Co. Ltd. case Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. P Ltd., 1969 2 SCC 716. Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechem case sought to examine the difference in the two marks piknik and picnic. It applied three tests, they being:
(1) is there any special aspect of the common feature which has been copied?
(2) mode in which the parts are put together differently i.e whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether, when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts? In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded (at SCC p. 597, para 39) that the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word picnic for piknik.*** Para 35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:28 O.S.No.4514/2015
(a) The nature of the marks i.e whether the marks are word marks or label marks or composite marks i.e both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Para 36. Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.
Para 37. The trial court will now decide the suit keeping in view the observations made in this judgment.
In F. Hoffmanny. V. La Roche and Co. v. Georfferv Manners and Co., AIR 1970 SC 2062 it was laid down thus:
29 O.S.No.4514/2015(i) In order that a trade mark may be found deceptively similar to another it is not necessary that it 'should be intended to deceive or intended to cause confusion. It is its probable effect on the ordinary kind of customers that one has to consider. For this purpose it is necessary to apply both the visual and phonetic tests. It is also important that the marks should be compared as wholes.
It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark.
24. In a suit for infringement or passing off of a trademark the plaintiff in order to succeed in the suit the plaintiff must show that the defendant must have sold its goods or offered the services in a manner which has deceived or to be likely to deceive the public into thinking that the defendant's good or services are of the plaintiff. The plaintiff in a suit for passing off action has to show that misrepresentation by the defendant to the public is likely to cause confusion in the mind of the public. As per Section 28 of the Trade Marks Act it gives a exclusive right to use the trademark in relation to goods or services 30 O.S.No.4514/2015 in respect of which the trademark is registered to obtain a relief in respect of infringement. By perusing the entire material on record I am of the opinion that the use of the word NANDINI by the Defendant is deceptively similar to registered word NANDHINI of the plaintiff thereby defendant has infringed and passed off its goods as that of the Plaintiff by using the offending name NANDINI VEG. Hence I answer the above two issues in the affirmative.
25. Issue No.4: Inview of the findings on issue No.1 to 3 Plaintiff is entitled for the relief of permanent and mandatory injunction as prayed.
26. Point No.5: Plaintiff had contended that Defendant by fraudulently adopted the mark NANDINI VEG for providing food in order to deceive the customers and to encash the goodwill and reputation of the Plaintiff. So by using the mark NANDINI VEG there is damages caused to the Plaintiff. So they have claimed damages of Rs.25,000/- per month from the date of suit. The Plaintiff in its plaint has given the list of sales turnover from the year 1989-90 till 2014-15. However the Plaintiff has not produced any documents or account statement in support of the same, so as to make out their income 31 O.S.No.4514/2015 per month and damages that is caused from the date of filing the suit till the date of disposal. The Plaintiff has also not shown what is the actual damages or loss caused to the Plaintiff after commencement of business by the Defendant. It is also settled principle of law that in a remedy of damages on passing off, the plaintiff can either claim damages or account of profit and not both.
In the decision of Infosvs Technologies Ltd v. Park Infosvs & Ors 2007 (34) PTC 178 (Del). The court while granting permanent injunction restraining the defendant from doing business under the name "Park Infosys", the court refused to grant damages. The court held that in the absence of any proofofdamages, the plaintiffis not entitled to any damages.
Dormeuil Freres SA -Vs- Feraglow [1990] RPC 449 it was held that : An award of damages in Trademark disputes is essentially an attempt to put the proprietor into the same position as if the infringement had not occurred. This means that any damages awarded will be compensatory rather than punitive or exemplary. The methodology used to calculate what compensation is deemed appropriate in the circumstances is often by reference to the "notional reasonable licence" i.e. if the 32 O.S.No.4514/2015 infringer was a licensee under an arms length agreement, what royalty would have been expected.
27. In the present case, the plaintiff has not able to prove either the profits derived by the defendant from its illegal activities or such sales record to establish the loss. So in the circumstances, in the event of Plaintiff having failed to prove the damages having caused, there is no question of calling for the Defendant to render the true account and also Plaintiff being entitled for any damages. In the circumstances I hold the above point in the negative.
28. Point No.6: In the result I proceed to pass the following:
ORD ER The suit is decreed in part with costs.
The Defendants, their servants, agents, or any one claiming through them in any manner are hereby restrained by way of permanent injunction from infringing and passing off the Plaintiff's Trademark NANDHINI DELUXE/ NANDHINI or any other trade mark which are deceptively similar to their registered trade mark NANDINI for running Vegetarian and Non-Vegetarian 33 O.S.No.4514/2015 Restaurant by using offending name NANDINI VEG.
Inview of the suit having decreed Defendant shall surrender to the Plaintiff any unused bills, packaging cover or any such materials with mark NANDINI VEG.
Draw decree accordingly.
[Dictated to the Judgment Writer on computer, computerised, and print out taken by him, corrected and then pronounced by me in open court, this the 11th day of June 2020].
(SADANANDA NAGAPPA NAIK) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BANGALORE ANNEXURE List of witnesses examined on behalf of Plaintiff:
PW1 : N.Ananda List of documents marked on behalf of Plaintiff:
Ex.P1 : CC of Copyright certificate Ex.P2 : Menu card of the Plaintiff's hotel Ex.P3 : Plastic carry bag Ex.P4 : Office copy of the legal notice Ex.P5 : RPAD Acknowledgment Ex.P6 : Reply notice
Ex.P7 to 10: Trademark renewal legal use certificates Ex.P11 & 12: Two bills of the Defendant restaurant Ex.P13 & 14: Photograph Ex.P15 : C.D. 34 O.S.No.4514/2015 List of witnesses examined on behalf of Defendant:
DW1 : M.Udaya Kumar Shetty List of documents marked on behalf of Defendant:
-NIL-
XVIII Addl. City Civil Judge Bangalore City.35 O.S.No.4514/2015
Judgment pronounced in the open court as per separate judgment. Operative portion of judgment is as follows:
ORDER The suit is decreed in part with costs.
The Defendants, their servants, agents, or any one claiming through them in any manner are hereby restrained by way of permanent injunction from infringing and passing off the Plaintiff's Trademark NANDHINI DELUXE/ NANDHINI or any other trade mark which are deceptively similar to their registered trade mark NANDINI for running Vegetarian and Non-Vegetarian Restaurant by using offending name NANDINI VEG.
Inview of the suit having decreed Defendant shall surrender to the Plaintiff any unused bills, packaging cover or any such materials with mark NANDINI VEG.
XVIII Addl.C.C. & S.J., Bangalore