Madras High Court
Narmadha Chemicals (P) Ltd., Rep. By Its ... vs Siva Shakthi Soap Works, Rep. By Its ... on 13 November, 2006
Author: S. Rajeswaran
Bench: S. Rajeswaran
ORDER S. Rajeswaran, J.
1. O.A. No. 499/2006 has been filed to pass an order of ad interim injunction restraining the respondent from in any manner infringing the applicant's registered trademarks 'Triple Power' by use of trademark 'SUN POWER' of any mark deceptively similar to applicant's registered trademarks on in any other manner whatsoever during the pendency of the above suit.
2. O.A. No. 500/2006 has been filed to pass an order of ad interim injunction restraining the respondent from in any manner committing acts of copyright infringement by printing stocking and using "SUN POWER" which is a substantial reproduction of applicant's trademark "POWER" per se and with prefix/suffix in get up, layout, presentation, artistic work, lettering, style, placement of expressions or in any other manner whatsoever, during the pendency of the above suit.
3. O.A. No. 501/2006 has been filed to pass an order of ad interim injunction restraining the respondent from in any manner passing off and enabling others to pass off the respondents' aforesaid products as and for the applicant's aforesaid products by use of the trademarks "SUN POWER" of any mark deceptively similar to applicant's registered trademarks or in any other manner whatsoever, during the pendency of the above suit.
4. Application No. 3510/2006 has been filed to vacate the order of interim injunction passed on 22.6.2006 in O.A. No. 499/2006 in C.S. No. 450/2006.
5. The plaintiff is the applicant in O.A. No. 499 to 501/2006.
6. The suit is filed for the following reliefs:
A) A perpetual injunction restraining the defendants from in any manner infringing the plaintiff's registered trademarks "TRIPLE POWER" by use of trademark "SUN POWER" or any mark deceptively similar to plaintiff's registered trademarks or in any other manner whatsoever.
B) A perpetual injunction restraining the defendants from in any manner passing off and enabling others to pass off the defendants' aforesaid products as and for the Plaintiff's aforesaid products by use of the trademarks "SUN POWER" or any mark deceptively similar to plaintiff's registered Trademarks or in any other manner whatsoever.
C) A perpetual injunction restraining the defendants from in any manner committing acts of copyright infringement by printing stocking and using "SUN POWER" which is a substantial reproduction of plaintiff's trademarks "POWER" per se and with prefix/suffix in get up, layout, presentation, artistic work, lettering style, placement of expressions or in any other manner whatsoever.
D) the defendants be ordered to surrender to the plaintiff for destruction all labels, dyes, blocks, moulds, plates, screen prints, packing materials, visiting cards, letterheads, printer bills, cartons, sachets and other material bearing the infringing "Sun POWER" or any mark deceptively similar to plaintiff's artistic work and trademarks "POWER"' and with prefix/suffix with the word POWER labels.
7. Along with the suit, the plaintiff filed application Nos. 499 to 501/2006 for the aforesaid reliefs.
8. It is the case of the applicant's company that they are a Pvt. Limited Company which was originally established as a firm an 1991. The managing director of the applicant company K. Dhanapal has sworn to the affidavit filed in support of the above applications. It is stated that the present Managing Director K. Dhanapal started a proprietary concern in the year 1991 under the name and style or M/s. Gold Soap Company for the manufacture and marketing of several products such as detergent powder, detergent cakes etc. On 25.4.97 this proprietorship concern was reconstituted into a Pvt. Ltd. Co. that is the applicant herein.
9. It is the case of the applicant that they are the proprietors of several Trade Marks, significant part of which is the expression "POWER" adopted by them in the marketing of their goods to wit cakes, detergent power beauty soaps, shampoo, washing powder, hair-care products, etc. The trade mark 'power' has been used with different prefix and suffix and thus constituting various trade expressions such as active mini power pink, active powder, superpower, high power triple power etc. The labels of which are printed in several colour combination and varying styles and representations.
10. Insofar as triple power is concerned it was registered as a trade mark and the same has been renewed and therefore the applicant is holding a trade mark certificate for the product, namely, detergent cake. With regard to other trade mark names, they are under registration for consideration. The applicant is also the absolute owner of the artistic work in the trademark namely, triple power according to Copy Rights Act, 1957. It is claimed chat the applicant's Trade Marks enjoy great popularity and they are held in high esteem owing to advertisements and promotional activities undertaken by them from time to time.
11. While so, the respondent has been using such similar expression "power" with prefix Sun in respect of detergent cake without even the slightest change in the manner it is spelt. There is every reason that the members of the trade and public would get confused by use of such identical soundings and the respondent is making attempt to make illegitimate profits at the expense of the applicant's goodwill and reputation. Therefore the applicant issued a notice on 1.10.2005 intimating the respondent not to use on adopt their trade mark Sun Power in respect of detergent, cake and washing power for which the respondent send a reply dated 25.10.2005 denying the applicant's right and therefore the above suit and the applications have been filed by the applicant.
12. The respondent entered appearance and filed a counter affidavit. It is stated by the respondent that the word 'Power' is a common expression for which there is no registration of trade mark by the applicant. The respondent entered the business of manufacturing and marketing the detergent soaps in the year 1984. She registered her manufacturing unit as a small scale industrial unit in the state of Andhra Pradesh. She has created a mark on 8.12.97 bonafidely coining words 'Sun' and 'Power' on her own and adopted honestly by 'Sun Power' as her trade mark and the same is being used continuously from 8.12.97. In order to protect her rights, she filed an application No. 831199 for the registration of the Trade Mark 'Sun Power' on 8.12.98 before the Registrar of Trade Marks, Chennai. As the respondent did not receive any communication in respect of the above said trade mark application, she filed another application No. 1334603 dated 27.1.2005 with the same user date i.e. 8.12.97 before the Asst. Registrar of Trade Marks. She has also advertised her trade mark 'Sun Power' through cable T.V., cinema houses and Telugu newspapers and magazines. The Assistant Registrar of Trade Marks after considering her application number 1334603, by order dated 5.7.2005 directed that the application should be advertised before acceptance for registration in the trade marks journal subject to confirming the same in the State of Andhra Pradesh only. After knowing about the order of the Asst. Registrar, the applicant sent a notice dated 1.10.2005 making several allegations and the same was suitably replied by reply notice dated 25.10.2005. After waiting for nearly 6 months, the above suit has been filed and the only reason for not raking immediate action is that the applicant has no business or marketing activity in the State of Andhra Pradesh. Therefore the respondent prayed for the dismissal of the above said applications.
13. A reply affidavit has been filed by the applicant in which it is clearly stated that the applicant operates at an All India Level including in the State of Andhra Pradesh.
14. The respondent has filed application No. 3510/2006 to vacate the order of interim injunction granted in O.A.No. 499/2006 on 22.6.2006 which was subsequently extended on 6.7.2006.
15. Heard the learned Counsel for the applicant and the learned Counsel for the respondent. I have also gone through the documents filed and the judgments referred to by them in support of their submissions.
16. The points for consideration in the; above applications are:
1) Whether the respondent is infringing the applicant's registered Trade Mark 'triple power' by use of trade mark "sun Power"?
2) Whether the respondent is passing off their products as that of the products of the applicant herein; and
3) Whether the respondent is committing an act of copyright infringement by printing, stocking and using the trade mark "Sun Power"?
17. Though these are the matters to be gone into in detail at the time of trial after adducing evidence, for the purpose of granting injunction under Order 39 Rule 1 and 2 CPC, it is to be seen whether the applicant herein has established a prima facie case and proved irreparable injury that would be caused if the injunction is not granted. If these elements are proved, the balance of convenience would automatically follow.
18. The learned Counsel for the applicant submits that their trade mark triple power is duly registered and a certificate was issued to that effect on 10.8.92. He further submits that the artistic work for the label triple power detergent cake was also registered under the Copy right Act on 25.8.95 and in such circumstances this itself is sufficient to prove that their trade mark triple power in respect of detergent is infringed by the respondent's unregistered trade mark "Sun Power" detergent cake. For this proposition, he relies on the following decisions:
1) 2005 (31) PTC 502 (Mad.) (Gangotree Sweets & Snacks v. Shree Gangotree Sweets & Savouries)
2) 2006(2) TLNJ 592 (Civil) (Devi Pesticides, Private Ltd. Ch-17 v. Shiv Agro, Chemicals Industries, Gujarat.
19. In 2005 (31) PTC 502 (cited supra) this Court held that once a trade mark registered with the Registrar, any infringement of such registered trade mark by any person would entitle the holder of the registered trade mark a statutory right to protect itself from such infringement from such persons.
20. In 2006 (2) TLNJ 592 (Civil) (cited supra) a Division Bench of this Court held that a registered trade mark is infringed even if part of the trade mark is used.
21. In the above case, the plaintiff who are the registered trade mark holders for their product by name 'boom plus' filed a suit against the defendants for using the trade mark name 'Super Boom'. Along with the suit they filed applications for interim injunction and the same was dismissed by the learned Single Judge and aggrieved by the order of dismissal, an appeal was filed before the Division Bench. The Division Bench has clearly held that any action for infringement and pass-off where the similarity between the two trade marks is so close either visually, phonetically as otherwise and the court reaches the conclusion that there is imitation, no further evidence is required to establish that the plaintiff's rights are violated. After going through the two trade mark names. 'Boom plus' and 'Super Boom', the Division Bench felt that they are deceptively similar and the users of the product would be confused by the two names.
22. The learned Counsel for the plaintiff further relied on the decision of Delhi High Court reported in 1982-PTC-221 (Metro Playing Card Co. v. Wazir Chand Kapoor) to submit that a mere pending of the respondent's application for registration of its trade mark 'Sun Power' will not give her any right to infringe the applicant's trade mark. He also relied on a judgment of the Supreme Court reported in 2004 (2) SLT 627 (Midashygiene Industries P. Ltd. v. Sudhir Bhatia and Ors.) to submit that in cases of infringement either of trade mark or of Copy Right an injunction must follow and a mere delay in bringing action is not sufficient to defeat grant of injunction.
23. The learned Counsel for the plaintiff also relied on the decision of the Supreme Court reported in 2001 (1) CTMR 288 (SC) (Cadila Health Care Limited v. Cadila Pharmaceuticals Limited), especially the following passage giving guidelines by the Supreme Court for deciding the question of deceptive similarity in an action for passing off on the basis of unregistered trade mark:
20. 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:
(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; and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
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.
24. On the other hand the learned Counsel for the respondent submitted that there is no copy right for the word 'Power' and therefore there is no question of any infringement of applicant's copyright. He further submitted that the respondent has been marketing her products from 1987 onwards that too, only in Andhra Pradesh and at this stage no injunction could be granted against her. He further submitted that the trade mark has been granted to one K. Dhanapal trading as Gold Soap Co., whereas the applicant is M/s. Narmada Chemicals (P) Ltd. and therefore the suit itself is not maintainable. He relied on the decision of the Delhi High Court reported in 2002 (1) CTMR 16 (The Gillette Company v. A.K. Stationery) to submit that the respondent could be permitted to use the impugned trade mark when there is delay on the pat of the plaintiff in filing the suit. He also relied on an unreported decision of the Delhi High Court dated 27.9.85 made in I.A.No. 4860/1984 in suit No. 146/1998 to submit that in case of passing off the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiffs. He pointed out that the applicant's trade mark is triple power, active power, etc. Whereas the respondent's trade mark is 'Sun Power' which is easily distinguishable. He also submitted that insofar as the unregistered trade mark of the applicant is concerned the action for the infringement will not arise as an action for passing off can be taken by a registered proprietor of a registered trade mark.
25. The learned Counsel for the applicant relying on the decision of the Hon'ble Supreme Court (Dhariwal Industries Ltd. v. M.S.S. Food Products) submitted that the question of issuance of the certificate of registration issued in favour of the applicant company could be gone into in detail only at the time of trial and at present for the purpose of granting interim injunction, it is enough if the applicant prima facie proves that they have a valid registration certificate.
26. It is not in dispute that a registration certificate was issued on 10.8.92 to K. Dhanapal trading in Gold Soap Co. in respect of detergent for the trade mark triple power detergent cake. The artistic work was also registered under the Copy Rights Act by the said K. Dhanapal on 25.8.95. It is the case of the applicant company that the above said K. Dhanapal who started M/s. Gold Soap Company as a proprietary concern reconstituted the same into a Private Ltd. Co. The applicant herein is the Managing Director. An affidavit was filed by the said K. Dhanapal stating that he has assigned the registered trade mark along with the goodwill of the business to the applicant Co. Therefore the applicant Co. has prima facie proved that they are having the registered trade mark triple power detergent cake. Whether such assignment is valid is a question that can be gone into at the time of trial and on that score injunctions cannot be refused.
27. Insofar as the contention that there is no trade mark for power and therefore the respondent trade mark Sun Power is not infringing the applicant's trade mark is concerned, the Division Bench of this Court in 2006 (1) TLWJ 592 (cited supra) held that registered trade mark is infringed even if part of trade mark is used. In the very same decision the Division Bench held that Boom Flower and Boom plus which are the trade marks of the appellant therein were used earlier and the trade mark Super Boom used by the respondent therein later on would definitely confuse the minds of the end user and the word 'Boom' cannot be allowed to be used by the respondent. The facts in the present case and the facts of the above decision are similar and therefore I will have to follow the same to grant injunction in favour of the applicant.
28. Insofar as the question of delay is concerned the Supreme Court in 2004 (2) SLT 627 (cited supra) held that delay cannot be held against the applicant for granting the order of injunction.
29. From the typed set of papers I find that the labels and wrappers of the products of the applicant and that of the respondent are deceptively similar in colour, wordings, size, etc., and if the products of the applicant and that of the respondent are sold in the same shop it would definitely create confusion in the minds of the stockiest, shop owners and the public at large. Therefore there is every possibility that the respondent's products would be sold as if they were the products of the applicant.
30. Once it is established that the applicant is a registered trade mark holder for the trade mark triple power detergent cake, then the respondent's trade mark Sun power will definitely infringe the trade mark of the applicant and therefore the interim injunction as prayed for in the application No. 499/2006 is allowed and the injunction already granted by this Court on 22.6.2006 is made absolute. Consequently the application No. 3510/2006 is dismissed. No costs.
31. As I have already held that there is similarity in the name, label, wrapper, colour combination, wordings etc., in both the products of the applicant and the respondent, there is every possibility that it would create confusion in the minds of all the people concerned. It is also established, prima facie that the applicant has got copyright for the artistic work. Therefore the injunction already granted in application No. 500/2006 is made absolute and the application is allowed. Consequently application No. 501/2006 is also allowed restraining the respondent from passing-off and enabling others to pass-off the respondent's product as and for the applicant's product.
32. In the result, all the application filed by the application are allowed. The vacating the order of injunction petition filed by the respondent in application No. 3510/2006 is dismissed. No costs.