Madras High Court
M/S.N.Ranga Rao & Sons Private Limited vs Koya'S Perfumery Works on 9 February, 2016
Author: R.Subramanian
Bench: R.Subramanian
C.S.No.694 of 2009
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment Reserved on Judgment Delivered on
24.08.2021 06.09.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.No.694 of 2009
M/s.N.Ranga Rao & Sons Private Limited,
P.B.No.52, Vani Vilas Road, Mysore – 570004
and also at No.25-B, Industrial Estate,
Chennai – 600 097.
Rep. By its Director, Mr.Vishnu Das Ranga ...Plaintiff
(amended as per order dated 09.02.2016 in
A.No.152 of 2016)
Vs.
Koya's Perfumery Works,
223, First Cross, M.S.Palya,
Bangalore – 560 097. ...Defendant
Prayer: Plaint filed under Order IV Rule 1 of the Original Side rules and
under Order VII Rule 1 of C.P.C., r/w. Sections 134 & 135 of the Trademarks
Act, 1999 and under Sections 55, 58 & 62 of the Copyright Act, 1957,
praying as follows:-
a) granting permanent injunction restraining the defendant
abovenamed by itself, its servants, agents or anyone claiming through it from
in any manner infringing the Plaintiff's registered Trademark “WOODS” by
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C.S.No.694 of 2009
using the offending trade mark “HEAVEN WOOD” or any other mark or
marks which are identical and similar to the plaintiff's registered trademark
“WOODS”;
b) granting permanent injunction restraining the defendant
abovenamed by itself, its servants, agents or anyone claiming through it from
in any manner infringing the Plaintiff's copyrighted artistic work “WOODS”
by using the offending artistic work “HEAVEN WOOD” or any other work or
works which are identical and simialr to the plaintiff's registered Copyright
over the artistic work “WOODS”;
c) granting permanent injunction restraining the defendant, by itself,
its servants or agents or anyone claiming through it from in any manner
passing off of its agarbathi products bearing the offending trade mark and the
artistic work “HEAVEN WOOD” as and for the celebrated agarbathi
products of the Plaintiff bearing the registered Trademark and the copyrighted
artistic work “WOODS”, either by manufacturing, selling or offering for sale
or in any manner advertising the same;
d) directing the defendant to surrender to the Plaintiff the entire
stock of unused offending cartons bearing the offending trade mark
“HEAVEN WOOD” together with blocks and dyes for destruction;
e) directing the defendant to render a true and faithful account of
the profits earned by the defendant through the sale of their products sold
under the offending trade mark “HEAVEN WOOD” and directing payment of
such profits to the Plaintiff for the passing off committed by the Defendant;
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f) directing the Defendant to pay to the plaintiff the costs of the
suit.
For Plaintiff : Mr.Sathish Parasaran
for M/s.TMT Law Practice
For Defendant : Mr.R.Sathish Kumar
JUDGMENT
The plaintiff, which claims to be a leading manufacturer of agarbathies seeks injunctive reliefs restraining the defendant from infringing the plaintiff's registered trademark “WOODS” by using the offending trademark “HEAVEN WOOD” or any other mark or marks, which are identical and similar to the plaintiff's registered trademark “WOODS”, permanent injunction restraining the defendant from infringing the copyright of the artistic work “WOODS” by using the identical or similar artistic works for its mark “HEAVEN WOOD”, restraining the defendant from passing off of its agarbathi products as that of the plaintiff, by using the registered trademark as well as the copyright of the plantiff, directing the defendant to surrender the entire unused stock of the offending cartons together with blocks and dyes for destruction, for accounting and for costs. 3/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009
2.The plaintiff, which was originally a partnership firm has been formed as a private limited Company during the pendency of the suit. Required amendments to the plaint have also been effected. The plaintiff would claim that in course of its business, as a manufacturer of agarbathies, the plaintiff had honestly conceived and adopted various trademarks like “CYCLE BRAND”, “THREE IN ONE” etc. During the year 1985, the plaintiff conceived the trademark “WOODS” and adopted it for the use in its premium agarbathies. The plaintiff applied for registration of the said mark on 24.01.1985. The said mark of the plaintiff was registered in Class 3 with Registration No.432777 in respect of agarbathies and dhoop sticks. The said registration has been renewed and the same is alive even today. The plaintiff had also designed the carton of the agarbathi with the trademark “WOODS” with a peculiar artistic features and colour scheme. The said artistic features and colour scheme have been registered under the Copyright Act, 1958 in Registration No.A-54025/97. The plaintiff would also claim that its brand of agarbathies bearing the trademark “WOODS” has gained huge popularity in the market and its turn over has been increasing year on year. The turnover of the plaintiff has increased to Rs.249.92 Lakhs during the year 2008 – 2009 4/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 from Rs.34.12 Lakhs in the year 1995 – 1996. The plaintiff would claim that the defendant, which is a lesser known agarbathi manufacturer had started selling its agarbathies with the trademark “HEAVEN WOOD”.
3.According to the plaintiff, the defendant adopted the artistic features of the cartons of the plaintiff's trademark “WOODS” for its trademark “HEAVEN WOOD” and attempted to pass off of its goods as the goods of the plaintiff. The trade dress of the carton of the agarbathies marketed by the defendant in the name of “HEAVEN WOOD” was deceptively similar to that of the plaintiff's trademark “WOODS”, so that it would create a confusion in the minds of the ordinary consumer. There was also a distinct possibility of the defendant's agarbathies with the brand name, “HEAVEN WOOD”, being passed off as that of the plaintiff.
4.According to the plaintiff, the similarity was so striking that an average consumer could easily be led into buying the products of the defendant, believing it to be that of the plaintiff. It was also contended that the action of the defendant amounted to infringement of the trademark as well 5/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 as the copyright of the plaintiff. The cartons used by both the plaintiff and the defendant were also produced as documents along with the suit to demonstrate the similarity. On the above pleadings, the plaintiff sought for the injunctive reliefs and the relief of accounting as stated supra.
5.The suit is resisted by the defendant contending that it is the registered proprietor to the trademark “KOYA'S HEAVEN WOOD”, having obtained registration bearing No.1467210 in Class 3 on 03.07.2006. It is also claimed that the plaintiff, which had applied for rectification of the registration of the defendant's trademark, withdrew the said challenge to the defendant's registration. Therefore, according to the defendant, it, being a registered proprietor cannot be prevented from using the registered mark. Hence, there is no question of infringement of the trademark. It is also claimed by the defendant that the get up and the outlook of the carton was changed completely, soon after the receipt of the notice in the suit and there is no allegation in the plaint that the labels and the cartons in the present form infringe the artistic works of the plaintiff, therefore, there cannot be an infringement of a copyright also. The defendant had produced its present 6/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 carton, which according to the defendant is vastly different from the carton / trade dress used by the plaintiff.
6.It is also the contention of the defendant that the defendant has been using the trademark “KOYA'S HEAVEN WOOD” from 2006, continuously after having obtained a registration and therefore, there is no question of any passing off of the goods of the defendant as that of the plaintiff. It is the further claim of the defendant that the word “WOODS” is a common element in the trade and therefore, it cannot be said that there is an infringement of the trademark. On the above pleadings, the defendant sought for dismissal of the suit. On the above pleadings, the following issues were framed by this Court on 04.01.2017:-
“i) Whether the suit is maintainable for the relief of infringement of trademark as the defendant is the registered proprietor of the trademark “KOYAS HEAVEN WOOD”?
ii) Whether the defendant has infringed the copyrighted artistic work in the label “WOODS”?
iii) Whether the defendant is passing off his goods using the trademark label “HEAVEN WOODS” or the amended trademark label “HEAVEN WOODS” as and for the celebrated 7/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 goods of the plaintiff using the registered trademark and copyrighted artistic work “WOODS”?
iv) Whether the impugned trademark “WOODS” is a well known trademark and is entitled to be protected as such?
v) Whether the plaintiff has proved loss of reputation and damage to goodwill caused by the defendant ? and
vi) To what reliefs the parties are entitled to?”
7.At trial, one Mr.V.Ramamoorthy, Associate Regional Manager of the plaintiff was examined as P.W.1 and Exs.P1 to P13 were marked. On the side of the defendant, Mr.Ahmed Koya, the partner of the defendant firm was examined as D.W.1 and Exs.D1 to D6 were marked.
8.I have heard Mr.Sathish Parasaran for Rajesh Ramanathan, learned counsel for the plaintiff and Mr.R.Sathish Kumar, learned counsel appearing for the defendant. Both the counsel filed their written arguments as well as additional written arguments.
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9.Issue No.1:- This issue relates to maintainability of the suit on the ground of infringement of the trademark, in as much as, the defendant is also a registered proprietor of “KOYA'S HEAVEN WOOD”.
9.1.Mr.Sathish Parasaran, learned Senior Counsel appearing for the plaintiff would vehemently contend that the plaintiff had registered its mark even in the year 1996 and the defendant had applied for registration only in the year 2006 and was successful in obtaining the registration. According to him, the fact that the defendant was able to obtain subsequent registration of the mark “KOYA'S HEAVEN WOOD” would not enable him to infringe the previously registered mark of the plaintiff. It is also contended that the defendant has not given any bonafide reason for the adoption of the name “KOYA'S HEAVEN WOOD” with a same trade dress as that of the plaintiff's mark “WOODS”.
9.2.Reliance is also placed on the fact that both the products are of the same class namely, agarbathies and that any similarity between the marks would lead to confusion, is a matter of presumption under Section 29(3) of 9/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 the Trademark Act. The learned Senior Counsel appearing for the plaintiff would also point out that a total lack of evidence on the side of the defendant to demonstrate that the defendant has been using the trademark “KOYA'S HEAVEN WOOD” either from 1991 or from 2006.
9.3.Mr.Sathish Parasaran would also draw my attention to the similarity between the cartons of the plaintiff's mark “WOODS” and the defendant's mark “KOYA'S HEAVEN WOOD”, prior to the alteration by the defendant and contend that the cartons were so deceptively similar that Section 29(3) would automatically stand attracted.
9.4.Countering the said submissions, Mr.R.Sathish Kumar, learned counsel appearing for the defendant would submit that having withdrawn the application for rectification of the defendant's mark “KOYA'S HEAVEN WOOD” filed before the Intellectual Property Appellate Board in ORA/1/2010, the plaintiff cannot maintain the suit for infringement. It is the further contention of the learned counsel that the Hon'ble Division Bench had infact, found that after the change in the trade dress by effecting those 10/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 alterations in the cartons used by the defendant over its mark “KOYA'S HEAVEN WOOD”, the claim that there was a deceptive similarity or that there is an infringement of the copyright of the plaintiff does not survive. He would also point out that the Hon'ble Division Bench took note of these facts and affirmed the order of dismissal of the injunction application in the present suit in OSA.No.449 of 2009. Therefore, according to Mr.R.Sathish Kumar, there cannot be said that the defendant is infringing the plaintiff's copyright.
9.5.Mr.Sathish Parasaran, learned counsel for the plaintiff would also rely upon the judgments of the Delhi High Court in Abbott Healthcare Pvt. Ltd., Vs. Raj Kumar Prasad & Others reported in (2014) 8 High Court Cases (Del) 442 wherein, the Delhi High Court had held that neither 28(3) nor Section 30(2)(e) bar filing of a suit by a registered proprietor against another registered proprietor of identical or similar trademark.
9.6.Reliance is also placed on the another judgement of the Delhi 11/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 High Court in Clinique Laboratories LLC & Another Vs. Gufic Limited & Another reported in 2009 SCC Online Del 751 for the preposition that there is no statutory bar. The Hon'ble Justice Mr.Rajiv Sahai Endlaw, while concluding that a suit for infringement by one registered proprietor against the other is not barred, observed as follows:-
“9.Registration has been made only prima-facie evidence of the registration otherwise being in accordance with the Act under Section 31(1) as contended by senior counsel for plaintiff but I find that even Section 28(1) while being subject to other provisions of Act, further provides that “registration of the trademark, if valid, give to the registered proprietor” exclusive right to use the trademark. Thus the validity of registration can be gone into, wherever permissible under the Act. Section 124(1)(b) also indicates that it was within the contemplation of the legislature that there could be a suit for infringement of trademark where the defendant takes a plea under Section 30(2)(e) i.e. that use by him is not infringement because of his mark being also registered. The legislature while further providing for stay of suit in such cases, in sub Section (5) expressly provided that such stay would not preclude the Court from making any interlocutory order. Section 31 r/w the scheme of 124 leads to an unescapable 12/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 conclusion that (A) there can be a suit for infringement against the registered proprietor (B) that upon the defendant taking the plea of his registration and of there being thus no infringement, such suit has to be stayed awaiting the rectification proceedings and (C) the Court is empowered in such case to pass any interlocutory order. The Court while passing interlocutory order will necessarily have to prima facie adjudicate the validity of the two competing registrations. Upon inquiry, it was informed that the Registrar while trying the rectification application has no power to grant interim relief. The legislature under Section 124(5) has thus empowered the Court under Section 124(5) to grant injunction against use of a registered trademark also if the Court is satisfied of the invalidity thereof. Though in view of Section 31, the test would be much stricter;
10.In my opinion, unless the provisions are so read, effect cannot be given thereto.
11.Once having reached a conclusion that registration is only prima facie evidence of validity, it is axiomatic that if the Court is satisfied otherwise on the basis of material on record and in the facts of the case, the Court is empowered to injunct use of registered trademark also. I do not find any reason to limit / restrict the applicability of sub- Section (5) as suggested by the senior counsel for the 13/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 defendant, in the absence of the legislature providing so. If the legislature had felt that there could be no infringement by a registered trademark, there was no need to provide for such a suit as in Section 124(1)(b) and (i). In fact, sub-clause(1) of 124(1) shows that the suit can be instituted even where the rectification proceedings are pending i.e. where the plaintiff is even at the time of institution of the suit aware of the defendant having a registered trademark.” 9.7.The same view has been reiterated in Abbott Healthcare Pvt. Ltd., Vs. Raj Kumar Prasad & Others by the Delhi High Court. I do not see any reason to depart or to take a contrary view from the above view expressed by the Delhi High Court. I am in respectful agreement with the conclusions reached by the Delhi High Court, as regards the maintainability of the suit for infringement by a registered proprietor against another registered proprietor. Therefore, Issue No.1 is answered against the defendant and I conclude that the suit is maintainable.
10.Issue No.2 :- This issue relates to infringement of the copyright. 14/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 10.1.The original carton of the plaintiff has been produced and marked as Ex.P12. The colour scheme used by the plaintiff in Ex.P12 viz., of a dark green background with a words “WOODS” written in pine oak colour with brown grains on the letters “WOODS”, a picture of a tree and some artistic work in the same colour are present on both sides of the mark “WOODS”. The carton that was used by the defendant prior to the suit has been filed as Ex.P13. A perusal of the same would show that the same colour combination was used by the defendant for the words “KOYA'S HEAVEN WOOD” and a photograph of row of trees and bark of a tree are found printed on both sides of the words “HEAVEN WOOD”. The colour scheme and the artistic work, no doubt, are deceptively similar to that of the plaintiff's trade dress.
10.2.However, it is now admitted by both the parties that the defendant is no longer using the carton marked as Ex.P13. The present carton, which is actually used by the defendant has been marked as Ex.D3. The entire colour combination has been changed and the style of writing of the letters HEAVEN WOOD have also been changed. The carton that is now 15/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 being used by the defendant has a brown background and the letters are written in yellow colour. The present carton, which is admittedly in use is vastly different from that of the plaintiff's carton. This fact is also admitted by P.W.1 in his cross-examination. In fact, the counsel for the defendant, Mr.R.Sathish Kumar would even undertake that the defendant will not use the carton as found in Ex.P13. Therefore, I find that, though it could be said that there was an attempted infringement of the copyright of the plaintiff, the same is not continuing and hence, Issue No.2 is answered against the plaintiff, in view of the undertaking given by the learned counsel for the defendant that the defendant does not intend to using the Ex.P13 for its agarbathies marketed by it with the trademark “HEAVEN WOOD”.
11.Issue No.3: This issue relates to the passing off action. As already pointed out in Issue No.2, the defendant has changed the entire colour scheme of the cartons of its agarbathies and the possibility of deception has now been substantially removed, the learned counsel for the defendant has also made a statement that the defendant does not intend using the carton marked as Ex.P13 at any time in future, I am of the considered 16/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 opinion that the defendant cannot be held guilty of passing off its goods as the goods of the plaintiff.
12. Issue No.4:
Mr.R.Sathish Kumar, learned counsel appearing for the defendant would draw my attention to the conclusions of the Hon'ble Division Bench in the appeal filed as against an order refusing the interim injunction in the very case on hand to contend that the Hon'ble Division Bench has observed that the word “WOODS” is a publici juris and the fact that wood is used in manufacturing of agarbathies and many of the agarbathi manufacturers have used the word wood in their products and therefore, the plaintiff cannot claim exclusive right to the mark “WOODS”. Relying heavily upon the observations of the Hon'ble Division in para 38 of the judgment, which reads as follows:-
“38. In the considered opinion of the Court, the word “WOOD” is a publici juris. The respondent in this connection, has drawn the attention of this Court to various products including agarpathies manufactured and marketed by different firms. The documentary evidence of the same is available from 17/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 page No.79 to 89 of the typed set of papers. A perusal of those documents would disclose that the word “WOOD” is a necessary ingredient for manufacture of agarpathies and consequently most of the manufacturers are using it for the manufacture of agarpathies except for the manufacture of “Dhooth” sticks. Any one can make use of the wood as he likes and if it is so, it will be publici juris. Therefore, the claim of the appellant that since they got the registration of the trade mark under the name and style of “WOODS”, they alone have exclusively got right to use the same, in our considered opinion lacks merits.” Mr.R.Sathish Kumar, learned counsel for the defendant would submit that the plaintiff cannot claim exclusive right to use the mark “WOODS” and prevent others from using the similar mark. To provide evidentiary support to the above contention, the defendant has produced various cartons of other manufacturers, which used the word “WOOD” or “WOODYS” in combination with other words or separately to contend that the mark “WOODS” is publici juris and therefore, the plaintiff cannot claim exclusive rights.
12.2.Contending contra, Mr.Sathish Parasaran, learned counsel for 18/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 the plaintiff would submit that the decision of the Hon'ble Division Bench cannot put against the plaintiff as it was only at an interlocutory stage and the same cannot be used to prevent the plaintiff from establishing its right over its registered trademark.
12.3.Reliance is placed by the learned Senior Counsel for the plaintiff on the judgment of the Hon'ble Supreme Court in National Bell Co.
Vs. Metal Goods Mfg. Co. (P) Ltd., and Another repored in 1970 (3) SCC 665, which reads as follows:-
“The evidence in the present case does not show that there were repeated breaches which went unchallenged though known to the proprietor. Mere neglect to proceed does not necessarily constitute abandonment if it is in respect of infringements which are not sufficient to affect the distinctiveness of the mark even if the proprietor is aware of them (See Re Farina). Where neglect to challenge infringement is alleged, the character and extent of the trade of the infringers and their position have to be reckoned in considering whether the registered proprietor is barred by such neglect. (See Rowland V. Mitchell) The plea of common use must fail, for to establish it the use by other persons should be 19/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 substantial. Though evidence was produced by the appellant- companies to show that there were other bells in the market with 'Fifty' or '50' inscribed on them no evidence was led to show that the use of the word 'Fifty' or the numeral '50' was substantial. In these circumstances, it is impossible to sustain the contention founded on clause (c) of Section 32.” Drawing my attention to the above observations of the Hon'ble Supreme Court, Mr.Sathish Parasaran would contend that merely because many people use the mark and the same is not challenged would not amount to abandonment or the same would not amount to the mark becoming publici juris. The learned Senior Counsel would also draw my attention to the judgment in Pidilite Industries Ltd., Vs. S.M.Associates and others reported in 2003 SCC Online Bom 143 to butress his contention that the observations made in interlocutory proceedings cannot be relied upon at the final hearing particularly, with reference to the question where, a particular mark is a publici juris or not.
12.4.Reliance is also placed by the learned Senior Counsel for the plaintiff on the judgment of the United States Court of Appeals in Abercrombie & Fitch Compay Vs. Hunting World, Incorporated 20/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 reported in 537 F.2d 4 (1976), which reads as follows:-
“It will be useful at the outset to restate some basic principles of trademark law, which, although they should be familiar, tend to become lost in a welter of adjectives.
The cases, and in some instances the Lanham Act, identify four different categories of terms with respect to trademark protection. Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation, however, are not always bright. Moreover, the difficulties are compounded because a term that is in one category for a particular product may be in quite a different one for another, because a term may shift from one category to another in light of differences in usage through time, because a term may have one meaning to one group of users and a different one to others, and because the same term may be put to different uses with respect to a single product. In various ways, all of these complications are involved in the instant case. A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species. At common law neither those terms which were generic nor those which were merely descriptive could become valid trademarks, see Delaware & Hudson Canal Co. v. Clark, 80 U.S. (13 Wall.) 311, 323, 20 L.Ed. 581 (1872) ("Nor can a generic 21/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 name, or a name merely descriptive of an article or its qualities, ingredients, or characteristics, be employed as a trademark and the exclusive use of it be entitled to legal protection"). The same was true under the Trademark Act of 1905, Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536 (1911), except for marks which had been the subject of exclusive use for ten years prior to its enactment, 33 Stat. 726.” A term may thus be generic in one market and descriptive or suggestive or fanciful in another.
The term which is descriptive but not generic stands on a better basis. Although Section 2(e) of the Lanham Act, 15 U.S.C. § 1052, forbids the registration of a mark which, when applied to the goods of the applicant, is "merely descriptive," § 2(f) removes a considerable part of the sting by providing that "except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce" and that the Commissioner may accept, as prima facie evidence that the mark has become distinctive, proof of substantially exclusive and continuous use of the mark applied to the applicant's goods for five years preceding the application. It is quite impossible to get any rule out of the cases beyond this:
That the validity of the mark ends where suggestions ends and description begins.” 22/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 12.5.From a reading of the above principles evolve in cases relating to trademarks, the position that emerges is that while arbitrary or fanciful marks will have the highest degree of protection, the same is lesser in case of suggestive marks and the protection disappears when the suggestive mark becomes a descriptive mark or a generic term. It is the contention of the defendant that the term “WOOD” is a generic term used by many of the manufacturers of agarbathies and therefore, the plaintiff is not entitled to claim any exclusive right over it, despite having obtained a registration.
12.6.According to the plaintiff, the term “WOODS” has been used by it as a suggestive mark of the nature of the perfume used. Mr.Sathish Parasaran would very vehemently contend that, though the mark “WOODS” cannot be called as arbitrary or fanciful, it is definitely suggestive of the perfume use namely “WOODY” perfume. Therefore, according to the learned Senior counsel, it being a suggestive mark, it is entitled to protection, though not at the same level of a arbitrary or a fanciful mark. It is also his submission that it may not be termed merely as descriptive mark on the ground that the “WOOD” is used in manufacture of almost all agarbathies. He would also discountenance the reliance placed upon the website of the plaintiff, which describes the 23/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 manufacturing process of agarbathi, contending that the contents of the website or the use of the word “WOOD” instead of Bamboo therein, cannot be taken advantage of by the defendant for denying the right of the plaintiff to its mark.
He would also point out that the defendant itself had obtained registration for the mark “HEAVEN WOOD”.
12.7.Per contra, Mr.R.Sathish Kumar, learned counsel appearing for the defendant would submit that the fact that many of the manufacturers of agarbathies have used the word “WOOD” with some addition or alteration, would by itself make its publici juris and deny protection to the registered name “WOOD” or “WOODS”. Mr.R.Sathish Kumar would also point out that while the mark of the defendant is a combination of the three words “KOYA'S HEAVEN WOOD”, the plaintiff's mark is a simple single word “WOODS”, which would definitely be a generic term in the manufacture of agarbathies.
12.8.As I had already pointed out that the mark “WOODS” can be suggestive when used in the agarbathies. The fact that Bamboo, which is a grass, is used in the manufacture of agarbathies by itself may not make the mark “WOODS” a descriptive mark. As already pointed out by Mr.Sathish Parasaran, the fact that the plaintiff has not chosen to launch proceedings against various 24/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 manufacturers, who used the word “WOOD” or “WOODY” will not disentitle it from claiming protection for the mark “WOODS”. The Hon'ble Supreme Court in National Bell Co. Vs. Metal Goods Mfg. Co.(P) Ltd & Another as stated supra had very clearly held that mere neglect to sue would not deprive the plaintiff of its right over the mark.
12.9.No doubt, the Hon'ble Division Bench in OSA.No.449 of 2009 had reached a conclusion that the mark “WOODS” is publici juris. As rightly pointed out by the learned counsel appearing for the plaintiff, observations made at the interlocutory stages cannot be said to be binding on the parties at later stage of the litigation, when the Court examines the entire maze of evidence available before it. In the Andhra Perfumery Works joint family Concerns Vs. Karupakula Suryanarayaniah and Others reported in 1967 SCC Online Mad 177, the Hon'ble Division Bench of this Court had denounced the claim that the registered trademark has over a period of time lost its distinctness due to surreptitious piracy by quoting the following passage from Ripley V. Bandey, (1897) 14 RPC 591, which reads as follows:-
“I do not myself see how it is any answer to a man who comes forward to establish such a common law Trade Mark to say 25/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 that, some time after your character was established and your goods were known, and you money, time, and ingenuity had been expended, perhaps in large advertisements and otherwise, others began to use it, and so, because they began to use it after your rights had been ascertained, it is in common use. That seems to me to be an argument which contradicts itself in the mere statement. When once appropriation has been made, common use becomes impossible; until (and possibly that is the logical result of this case) the person entitled to the Trade Mark allows others to use it so as to forfeit his right to appropriate the term, and so the words sink again into common use, from which, of course, after that, they cannot be revived. But until something of that kind has happened, it seems to me that words once appropriated cannot be said to be words in common use, merely because others, who ex concessis on the mere statement, are trespassers, have attempted to use those words subsequently. Therefore, to my mind, the defence on the ground of common use entirely breaks down.” The Hon'ble Division Bench observed that a right to a trademark cannot be lost by mere inaction. In view of the settled law, I do not think that the claim of the defendant to the effect that the mark “WOODS” has become publici 26/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 juris and therefore, it is not entitled to protection any longer can be accepted.
Issue No.4 is answered in favour of the plaintiff.
13.Issue No.5: This issue relates to claim of loss of reputation and goodwill.
I have already concluded that the plaintiff is not entitled to any relief on the ground of passing off, since the defendant has changed its carton and the new carton that is adopted by the defendant does not bear any similarity, much less the deceptive similarity with that of the plaintiff's cartons. Once it is concluded that the defendant is not adopting a deceptively similar mark, I do not think that the plaintiff would be entitled to damages for loss of reputation or goodwill. Hence, Issue No.5 is answered against the plaintiff.
14.In result, the suit is partly decreed, confirming the right of the plaintiff to the trademark “WOODS” along with a copyright. Suit in respect of the injunctive reliefs is dismissed, in view of the fact that the counsel for 27/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 the defendant had undertaken not to use the similar trade dress so as to infringe the copyright of the plaintiff in the cartons of the defendant. Considering the fact that the suit is decreed partly, I direct the parties to bear their own costs.
06.09.2021 kkn Internet:Yes Index:No Speaking List of witness examined on the side of the plaintiff:-
Mr.V.Ramamoorthy (P.W.1) List of documents marked on the side of the plaintiff:
S.No. Description of Documents Exhibit
1 The original letter of authorization dated 28.06.2017 given by the Ex.P1
plaintiff company authorising me to adduce evidence in the suit. 2 The photo copy of certificate of registration under trade marks act for Ex.P2 the trade mark “WOODS” under No.432777 in Class 3. (learned counsel for the plaintiff undertakes to produce original before conclusion of recording of evidence) (the learned counsel for the defendant has objected to the marking of document being a photo copy).
3 The photo copy of certificate of registration under copy rights act for Ex.P3 the artistic work “WOODS LABLE” under No.A-54025/1997 (learned counsel for the plaintiff undertakes to produce original before conclusion of recording of evidence) (the learned counsel for the 28/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 S.No. Description of Documents Exhibit defendant has objected to the marking of document being a photo copy).
4 The photo copy of certificate of registration under Trade Marks Act Ex.P4 for the trade mark “WOODS” under No.432777 in Class 3, with details of renewal upto 2026. (The original produced, compared, verified and returned to witness).
5 The Registration Certificate for the trade mark WOODS label under Ex.P5 No.1852599 in Class 3 dated 20.08.2009. (The original produced, compared, verified and returned to witness). (Learned counsel for the defendant objected to marking the document on the ground that there is a statutory bar for making of certificate as only the certified copy of Registration issued by Registrar of Trade Mark has to be marked) 6 (Series) are certificates of registration of Trade mark “WOODS” in Ex.P6 the following countries:
a) Malaysia under No.05001768 in Class 4.
b)Malaysia under No.05001767 in Class 3.
c) Mauritius under No.01839/2006.
d) Morocco under No.95342.
e) Saudi Arabia under No.857/40.
f) Singapore under No.T05/01862Z.
g) Singapore under No.T05/01860C.
h) Nepal under No.2006/026777.
i) United States of America under No.4078540.
j) United Arab Emirates under No.67010.
k) United Arab Emirates under No.57453.
l) Indonesia under No.IDM000204374.
m)Indonesia under No.IDM000289456.
n)Indonesia under No.IDM000095521.
o)France under No.063430236.
p)Colombia under No.10 097288.
q)Filing statement for registration in Algeria under No.041938.
r) Benelux under No.0801824.
(All originals produced, compared, verified and returned to witness). 7 (Series) are copies of the invoices proving sales of products under the Ex.P7 mark “WOODS”. (Originals produced, in respect of invoices from the year 1996 to 1999, compared, verified and returned to witness). (Learned counsel for the plaintiff undertakes to produce original in respect of invoices from the year 2000-2009 before conclusion of 29/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 S.No. Description of Documents Exhibit recording of evidence) (Learned counsel for the defendant has made an objection to mark the photo copy of invoices pertaining the year 1995, 2000 to 2009).
8 (Series) are the awards and accolades received by the plaintiff. (All Ex.P8 originals produced, compared, verified and returned to witness). 9 Invoices for sale of WOODS brand agarbathis in foreign jurisdictions Ex.P9 (original invoices for the years 2005-2009 are produced, compared, verified and returned to witness). (Learned counsel for the defendant has made an objection to mark the photo copy of invoices pertaining the year 1995 to 200) 10 Promotional materials and bills for promotional materials pertaining to Ex.P10 WOODS brand agarbathis. (All originals produced, compared, verified and returned to witness). (Learned counsel for the defendant has made an objection as the said promotional materials are advertisement for which there are no dates and the names of the Magazines/Journals are missing).
11 Trademark caution notices issued by the plaintiff in respect of various Ex.P11 brands. (All originals produced, compared, verified and returned to witness). (Learned counsel for the defendant has made an objection as the said caution notices for which there are no dates and the names of the Magazines / Journals are missing).
12 Original plaintiff's label. Ex.P12 13 Original defendant's label. Ex.P13 List of witness on the side of the defendant:-
Ahmed Koya (DW1) List of documents marked on the side of the defendant:-30/32
https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 S.No. Description of Documents Exhibit 1 Authorization letter. Ex.P1 2 The certified copy of the trademark registration under No.1462710 in Ex.P2 Class 3 for “KOYA'S HEAVEN WOODS”.
3 The original amended cartons for the defendant's agarbathies under Ex.P3 the trademark “KOYA'S HEAVEN WOODS”.
4 Series (12 Nos) are the Cartons which use WOODS as a part of the Ex.P4 trademark by other manufacturers for agarbathies and related products as available in the market.
5 The printouts from the Internet for other products wherein in word Ex.P5 WOODS is used as part of the trademark for agarbathies.(Certificate affidavit of DW1 filed under Section 65 B of the Indian Evidence Act is recorded).
6 The photocopy of computer generated invoices for sale of KOYA Ex.P6 HEAVEN WOODS Agarbathies by the defendant. (Learned counsel for the plaintiff raised objection to mark this document since it is a photocopy).
06.09.2021 kkn R.SUBRAMANIAN, J.
KKN 31/32 https://www.mhc.tn.gov.in/judis/ C.S.No.694 of 2009 Pre-delivery judgment in C.S.No.694 of 2009 06.09.2021 32/32 https://www.mhc.tn.gov.in/judis/