Madras High Court
Taiyo Feed Mill Private Limited vs Pitchandi Arunachalam Konar on 15 November, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.Nos.295 & 324 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated :15.11.2019
Coram
The Honourable Mr.Justice N.SATHISH KUMAR
C.S.Nos.295 & 324 of 2019
and
A.Nos.7206, 7207, 7209 to 7216, 8128, 8250 to 8257 of 2019
and
O.A.Nos. 458 to 461 & 522 to 525 of 2019
Taiyo Feed Mill Private Limited,
No.17 A, South Mada Street,
Kolathur, Chennai,
Tamil Nadu 600 099,
Rep.by its Director
Mr.R.S.Prabakar ...Plaintiff in
both Suits
Versus
Pitchandi Arunachalam Konar,
Shop No.2271, Chawl No.118,
Group 7, Tagore Nagar,
Vikhroli (East),
Mumbai 400 083. ...Defendant
in both Suits
Prayer in C.S.No.295 of 2019 : This Civil Suit is filed under
Order IV Rule 1 of the Original Side Rules and Order VII, Rule 1
of the Code of Civil Procedure read with Sections 27, 134 & 135 of
the Trade marks Act, 1999, Sections 51, 54, 55 and 62 of the
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C.S.Nos.295 & 324 of 2019
Copy Right Act, 1957 & Proviso 1 to Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division
prayed
(a) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
servants, agents, distributors, dealers, stockists,
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
manufacturing, selling and distributing, advertising fish
food using the HANI trademark which is almost
identical/deceptively similar to the plaintiff's AINI
trademark AINI in any manner whatsover;
(b) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
servants, agents, distributors, dealers, stockists,
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
from manufacturing, selling and distributing, advertising
fish food using the HELLO PETS trademark whcih is almost
identical/deceptively similar to the plaintiff's TAIYO
trademark amounting to infringement of the plaintiff's
registered trademark TAIYO in any manner whatsoever;
(c) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
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C.S.Nos.295 & 324 of 2019
servants, agents, distributors, dealers, stockists,
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
in any manner making use of the HANI labels, or any other
artistic works which are deceptively similar to plaintiff’s
copyrighted artistic works in AINI label, and which would
amount to infringement of the plaintiff’s copyright in the
AINI labels and variations thereof or any in other manner
whatsoever;
(d) a permanent injunction restraining the defendant by
themselves, their directors, legal representatives,
successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers,
dealers, retailers, advertisers or any one claiming through
or under them from committing acts of passing off and
enabling others to pass off by manufacturing, distributing,
marketing, selling, offering for sale, advertising or in any
other manner dealing in fish food or any other product
bearing the deceptively similar mark HANI or HELLO PETS
which is confusingly similar to plaintiff’s mark AINI and
TAIYO respectively, using any similar label, get –up, or
packaging, which in any manner whatsoever would be
considered to be similar to the plaintiff’s label, get up or
packaging;
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C.S.Nos.295 & 324 of 2019
(e) the defendant be ordered to pay to the plaintiff a sum of
Rs.10,00,000/- as damages for committing acts of
infringement of trademark and copyright, and for passing
off;
(f) the defendant be ordered to surrender to the plaintiff for
destruction all goods advertisement materials, packing
materials, cartons, wrappers, labels in respect of fish food
and other allied/ cognate goods containing the offending
mark/label or any other mark/label similar to plaintiff’s
trademark/labels AINI or TAIYO;
(g) a preliminary decree be passed in favour of the plaintiff
directing the defendant to render true and faithful account
of profits earned by them by use of offending
label/trademark for fish food or other allied and cognate
goods and a final decree be passed in favour of the plaintiff
for the amount of profits thus found to have been made by
the defendant after the latter have rendered accounts;
(h) for entire costs of the suit;
Prayer in C.S.No.324 of 2019: This Civil Suit is filed under
Order IV Rule 1 of the Original Side Rules and Order VII, Rule 1
of the Code of Civil Procedure read with Sections 27, 134 & 135 of
the Trade marks Act, 1999, Sections 51, 54, 55 and 62 of the
Copy Right Act, 1957 & Proviso 1 to Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division
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C.S.Nos.295 & 324 of 2019
prayed
(a) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
servants, agents, distributors, dealers, stockists,
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
manufacturing, selling and distributing, advertising turtle
food using the HELLO PETS trademark which is deceptively
similar to the plaintiff’s TAIYO trademark amounting to
infringement of the plaintiff’s registered trademark TAIYO in
any manner whatsoever;
(b) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
servants, agents, distributors, dealers, stockists,
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
directly or indirectly in any manner copying, reproducing,
adapting, creating derivative works, or in any manner
using the plaintiff’s copyrighted work in the label “TAIYO”
amounting to infringement of copyright or in any other
manner whatsoever;
(c) a permanent injunction restraining the defendant,
themselves, their partners, successors-in-business,
servants, agents, distributors, dealers, stockists,
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C.S.Nos.295 & 324 of 2019
wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from
in any manner making use of the turtle food labels, or any
other artistic works which are deceptively similar/almost
identical to plaintiff’s copyrighted artistic works in the
TAIYO Turtle Food label, and which would amount to
infringement of the plaintiff’s copyright in the TAIYO Turtle
Fool labels and variations thereof or any in other manner
whatsoever;
(d) a permanent injunction restraining the defendant by
themselves, their directors, legal representatives,
successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers,
dealers, retailers, advertisers or any one claiming through
or under them from committing acts of passing off and
enabling others to pass off by manufacturing, distributing,
marketing, selling, offering for sale, advertising or in any
other manner dealing in turtle food or any other product
bearing the deceptively similar mark HELLO PETS which is
confusingly similar to plaintiff’s mark TAIYO respectively,
using any similar label, get –up, or packaging, which in any
manner whatsoever would be considered to be similar to
the plaintiff’s label, get up or packaging or in any other
manner wharsoever;
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(e) the defendant be ordered to pay to the plaintiff a sum of
Rs.10,00,000/- as damages for committing acts of
infringement of trademark and copyright, and for passing
off;
(f) the defendant be ordered to surrender to the plaintiff for
destruction all goods advertisement materials, packing
materials, cartons, wrappers, labels in respect of turtle food
and other allied/ cognate goods containing the offending
mark/label or any other mark/label similar to plaintiff’s
trademark TAIYO or TAIYO Turtle Food labels;
(g) a preliminary decree be passed in favor of the plaintiff
directing the defendant to render true and faithful account
of profits earned by them by use of offending
label/trademark for turtle food or other allied and cognate
goods and a final decree be passed in favor of the plaintiff
for the amount of profits thus found to have been made by
the defendant after the latter have rendered accounts;
(h) for entire costs of the suit
For Plaintiff : M/s.Arun C.Mohan
For Defendant : Mr.S.P.Chokhalingam
for M/s.T.Paean thaman
..in both
Suits
COMMON JUDGMENT
7 http://www.judis.nic.in C.S.Nos.295 & 324 of 2019 The learned counsel appearing for the plaintiff is present and submitted that they entered into a compromise with the defendant. The learned counsel appearing for the defendant also present and agreed for the same and it is admitted that the plaintiff does not have claim against the defendant's use of the mark “HANI” and the terms of the compromise thereto, is as follows:
“1.The plaintiff does not have any claim against the defendant's use of the mark “HANI”, and that the plaintiff does not question the validity of the defendant's word mark “HANI” in respect of Fish Feed covered under Clause 30 of Trade Marks Act.
2.The plaintiff does not have any claim against the defendant's use of the word mark “HELLO PETS” in respect of Fish Feed and Turtle Feed covered under Clause 30.
3.As suggested by the plaintiff and to its satisfaction the defendant had changed his trade dress and get up to his labels that he had used while marketing the Fish Feed and Turtle Feed. The copies of the labels consented by the plaintiff are enclosed herewith. The 8 http://www.judis.nic.in C.S.Nos.295 & 324 of 2019 defendant will not use the trade dress in the impugned label.
4.The plaintiff does not insist for any monetary damages from the defendant, and both the parties do not have any claim against each other.
5.The plaintiff does not insist for the defendant to surrender the advertisement materials, packing materials, cartons, wrappers, labels in respect of fish feed and turtle feed.
6.The plaintiff does not insist for the relief of rendition of accounts against the defendant.
7.The parties shall bear their own costs.
8.The defendant states that he has printed materials bearing the mark “HELLO PETS” as presented in the impugned labels and he shall exhaust/withdraw the same within 90 days.”
2. The learned counsel for the defendant submits that the suit may be disposed of in terms of the above agreement. The learned counsel appearing for the plaintiff submits that the plaintiff is not present and the plaintiff has agreed for the terms and his submission itself may be taken as admission.
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3. In view of the above, the suit is disposed of, by the above terms and the parties also affixed the respective two labels.
Consequently, all connected applications stand closed.
10http://www.judis.nic.in C.S.Nos.295 & 324 of 2019 15.11.2019 Index : Yes/No Pns 11 http://www.judis.nic.in C.S.Nos.295 & 324 of 2019 N.SATHISH KUMAR, J., Pns C.S.Nos.295 & 324 of 2019 15.11.2019 12 http://www.judis.nic.in