Bangalore District Court
M/S. Cothas Coffee Co vs Avighna Coffee Pvt. Ltd on 11 September, 2020
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE, AT
BENGALURU CITY, [CCH.NO.10]
Dated this day the 11th September 2020
PRESENT
Sri. SADANANDA NAGAPPA NAIK, B.A.L., LL.B.
XVIII Addl.City Civil Judge.
O.S.No.4047/2016
Plaintiff: M/s. Cothas Coffee Co.,
A registered partnership firm having its
office at No.609- 560/1, 609-560/2 &
323 Part B, Jigani,
Bommasandra Link Road,
Jigani Industrial Area,
Anekal Taluk,
Bengaluru- 562 105,
Reptd. by its partner C.S.Nitin,
S/o C.K.Sreenatha,
Major in age.
(By Sri. Sreevatsa Subramanian, Sr.
Advocate, Sri Thomas Vellapally
Advocate)
/VS/
Defendant: Avighna Coffee Pvt. Ltd.,
A company incorporated under the
Companies Act, 1956 and having its
registered office at
No.514/1, 80 Feet Road,
1st Block, Koramangala,
Bangalore - 560 034.
Reptd. by its director
2 O.S.No.4047/2015
Mrs.Girija Chandran,
W/o C.P.Chandan,
Major in age.
(By Ms.B.V.Nidhishree Advocate)
Date of institution of 29.04.2015
suit
Nature of the suit Permanent injunction
(Suit on pronote, suit
for declaration and
possession suit for
injunction, etc.
Date of the 05.07.2017
commencement of
recording of the
evidence.
Date on which the 11.09.2020
Judgment was
pronounced.
Year/s Month/s day/s
Total duration: 05 04 12
(SADANANDA NAGAPPA NAIK)
XVIII ADDL. CITY CIVIL AND
SESSIONS JUDGE, BENGALURU
JUDGMENT
The plaintiff filed this suit against the defendant prays to pass judgment and decree of permanent injunction to restrain the defendant, their distributors, stockists, servants, agents, retailers, representatives, business associates or any other person claiming under / through them in any manner from infringing and passing 3 O.S.No.4047/2015 off plaintiffs registered trade marks 'COTHAS COFFEE' and 'Cothas' by manufacturing, selling, offering for sale, stocking, advertising, either directly or indirectly any goods and in particular any coffee, tea or allied products under the trade mark 'Cotha Giri' or any other mark either in English or any other language, identical with or deceptively similar to plaintiff's registered trade marks or in any manner whatsoever and for costs.
2. The case of the plaintiff in brief is as follows:
It is the case of the plaintiff that the defendant is a company incorporated on 25.7.2014. The promotors as well as the directors of the defendants Mr.Girija Chandan who is the wife of Mr.C.P.Chandan and Mrs. Sathyavathi Prakas who is the wife of Mr.Cothas K Prakas both were earlier partners to the plaintiff company and retired under the retirement deed dated 23.12.2013 with the existing partners of the plaintiff namely Mr. CK.Sreenathan and C.S.Nitin. It is further contended that during the year 1969, plaintiff was trading in the name and style of Cothas Coffee Services and its partners were K.Krishnaveni, Cothas K Prakash, CK.Sreenathan and CK.Raghoonathan, who were children of late C.Krishnaiah Chetty. It is further contended that in the year 1984, plaintiff's name was changed to Cothas Coffee 4 O.S.No.4047/2015 Co. and the constitution of the partnership was also changed. One of the partners, C.K.Raghoonathan retired and Mrs. Gowri Raghoonathan was inducted into the partnership and she retired from the plaintiff firm on 21.1.2009. It is further contended on 23.12.2013, Cothas K Prakas and C.P.Chandan retired from the plaintiff firm by relinquishing all their rights, title, interest and goodwill in the plaintiff partnership firm in favour of CK.Sreenathan and C.S.Nitin. In the said retirement deed it was specifically agreed by said Cothas K.Prakas and C.P.Chandran that they shall have no right and shall not use the plaintiff's name, trade name, patent, product names, goodwill either directly or indirectly after their retirement from their firm and that the continuing partners of the plaintiff shall have exclusive use of the goodwill and right to carry on the business of the plaintiff. Further it is stated that upon the retirement they would have no right, title and interest or upon the plaintiff's partnership firm and its assets etc., in the immovable and movable properties, leasehold rights, possessory rights, receivables, claims etc., was fully settled and no amounts are due. It is further contended that above said persons shall not engage for a period of 3 years from the date of retirement deed, in any activity similar to the activities carried on by the plaintiff, either 5 O.S.No.4047/2015 directly or indirectly in any capacity. From 23.12.2013, the plaintiff is the sole, absolute and exclusive ownership rights to use the name and trading style Cothas Coffee Co. and the trademarks 'Cothas Coffee' and 'Cothas' in respect of coffee and coffee products.
3. It is further contended that the plaintiff firm carries on a highly reputed and well known business in connection with the manufacture, marketing and sale of roasted coffee, pure coffee powder, flavoured coffee powder, blended coffee powder, green coffee beans, coffee substitutes etc., under the trade mark 'COTHAS COFFEE'. They carried on said business for the past 46 years, from the year 1969. Due to high quality of its products, they have acquired tremendous goodwill and reputation in connection with the manufacture and sale of coffee and coffee products. They adopted the trade mark COTHAS COFFEE from Late Sri.C.Krishnaiah Chetty who was the founder of their business firm. They also own the domain name www.cothas.com and operates a website which displays details of their products, business and background on a worldwide basis. Their product with the trade mark 'Cothas Coffee' are extremely popular and widely distributed all over India and abroad. They manufactured and marketed approximately 1800 tons of coffee under their trade mark 6 O.S.No.4047/2015 in India during the year 2014-15 and exported approximately 75 tons of coffee under the said trade mark. Their products in the trade mark Cothas Coffee have been extensively advertised in various media including TV, News papers, magazines etc at the cost of Rs.2.35 crores for the period from 2002-03 to 2013-14. They have sales turnover of Rs.61.5 crores for the year 2014-15. They have registered their trade mark Cothas Coffee(device) in registration No.324288 dated 4.4.1977 in respect of coffee in class 30, Cothas Coffee under TM.No.1061979 dated 22.11.2001 in respect of coffee powder and flavoured coffee powder, blended coffee powder(Coffee and Chicory), tea and flavoured tea, coffee substitutes containing coffee in any proportion, chicory powder included in class 30. They have registered their trademark COTHAS under TM.No.1061983 dated 22.11.2001, 'Cothas Coffee (Label)' under TM.No.1061980, 'Logo of Cothas Coffee' under TM.No.1061981 dated 22.11.2001, 'Cothas Coffee Premium Blend' (Label) in TM.No.1061982 dated 22.11.2001. It is further contended that after retirement, CK.Sreenathan, CK.Nithin and Mrs.Srilatha Sreenathan as the partners of the plaintiff's firm and registered proprietors of the above trademarks.
7 O.S.No.4047/20154. It is further contended by the plaintiff that they came to know that the defendant company have filed trade mark application No.2824880 dated 13.10.2014 for the trade mark 'Cotha Giri' in respect of coffee, tea, cocoa, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, sauces, spices, ice' and the said application is still pending. The said trade mark is deceptively similar to their trade mark. It is further contended that the impugned trademark COTHA GIRI is identical and deceptively similar to the plaintiff's trademark COTHAS. Defendants have dropped a letter "s" from the trade mark 'Cothas' and used the word 'Cotha', which is identical to the plaintiff's trademark 'Cothas'. The addition of the word 'Giri' would not in any reduce the deceptive similarity or the confusion and deception that arise from use of such deceptively similar mark. It is further contended that the directors of the defendant company are the wives of the erstwhile partners of their firm, had in the said retirement deed clearly confirmed that they have no further rights in the plaintiff's firm. The above said Cothas K.Prakas and C.P.Chandhan in collusion with their wives presently directors of defendant started the defendant company on 25.7.2014. The adoption of impugned trade mark 'Cotha Giri' by the 8 O.S.No.4047/2015 defendant is with a dishonest intention to copy and imitate their well known trade mark Cothas. It is further contended that Cothas K.Prakas and CP.Chandan have apparently set up their wives to start the defendant company, since the defendant company would be a separate legal entity and the directors would be hidden behind the corporate veil of the defendant company. It is further contended that that above said persons are also independently indulging in acts of infringement of plaintiff's trademark and the tort of passing off. The adoption of the impugned trademark by the defendant clearly exposed as having done with a dishonest intention to copy and imitate the plaintiff trade mark 'Cothas' and 'Cothas Coffee' and it would be lead to confusion and deception of the public, since the trademarks 'Cothas' and Cotha Giri are deceptively similar to the plaintiff's trademark 'Cothas'. Hence, prays to decree the suit as prayed.
5. The defendant appeared through its counsel and filed the written statement denying the plaint averments. It is further contended that the plaintiff has deliberately misrepresented their address. The suit itself is hit by the provisions of Sec.28 & 35 of Trademarks Act. Plaintiff failed to bring to the notice of the court the alleged trademark registration are only in the class 30, as 9 O.S.No.4047/2015 such a blanket injunction in respect of all classes of goods and services, as sought by the plaintiff is illegal. It is further contended that the defendant company incorporated with main objects, being to carry on the business of cultivators, producers, growers, processors, curers, importers, exporters, dealers in wholesale, retail and distributors of coffee seeds, coffee powder, tea products, beverages, chicory, other preparations from coffee and tea, chemicals, fertilizers, pesticide, insecticide, manures required for plantations, coffee mixtures, etc.
6. It is further contended that the defendant company is an independent legal entity, who is not a signatory to the purported retirement deed dated 23.12.2013. It is solely run by the present directors Girija Chandan and Mrs.Sathyavathi Prakash. Their trade mark 'Cothagiri is different from plaintiff trade mark 'Cothas' & "Cothas Coffee". The defendant company has coined the trademark 'Cothagiri' to manufacture and market its products. The name and mark 'Cothagiri' is an invented word, which is derived from a combination of the names of one of the director's husband's family name, 'Cotha' and her own name 'Girija' and has thus been coined by her. The amalgam of two names is the invented word "Cothagiri". The word 'Cotha' means 'new' 10 O.S.No.4047/2015 in Telugu language, which is how her husband's family was referred to when his ancestors first moved to Bangalore about 150 years ago. The word 'Giri' besides being a part of her name also means 'mountain/hill' which region where coffee is grown and it is also depicted in the device logo accompanying the defendant's mark. Their company trademark is phonetically and visually different from plaintiff mark. Their sample packets and plaintiff's sample packets clearly indicates that there is no phonetic or visual similarity between the two marks.
7. It is further contended that they are running a legitimate business and has obtained various statutory permissions and registrations as required under law. They have spent exorbitant amounts towards marketing and brand building amongst its distributors and other business associates. There are no instance of confusion or deception among the customers. Merely roving expedition to harass the defendants company, plaintiff has filed the false suit and it is based on mere speculation. Their trademark COTHAGIRI is protected and permitted u/s.35 of Trademarks Act, 1999 which clearly provides that bonafide use by a person of his own name, or the name of any of his predecessor in business cannot be interfered with even by a proprietor of a registered trademark. The initial funds infused into the 11 O.S.No.4047/2015 defendant company were independent funds brought in by the two directors themselves. On the above grounds prays for dismissal of the suit.
8. On the basis of the above pleadings the predecessor in office has framed the following issues :
(1) Whether the plaintiff proves that it is the registered owner of the trade mark COTHAS COFFEE and COTHAS ?
(2) Whether the plaintiff proves that the defendant infringed and passing off the plaintiff's well established trademark COTHAS COFFEE & COTHAS by using offending trademark COTHA GIRI which is deceptively similar to that of plaintiff?
(3) Whether the plaintiff is entitled for the decree of permanent and mandatory injunctions as sought for?
(4) What order or decree?
9. The plaintiff in order to prove its case got examined its partner and one witness as PW1 & 2, got marked documents at Ex.P1 to P39 and closed their side. On the other hand, the director of the defendant's is examined as DW1, got marked documents at Ex.D1 to 8 and closed their sides.
10. I have gone through the records meticulously and have given my careful consideration to the 12 O.S.No.4047/2015 contentions of counsel for the plaintiff and defendant. The counsel for the plaintiff filed notes of argument.
11. My findings on the above issues are as under:
Issue No.1: In the affirmative
Issue No.2: In the affirmative
Issue No.3: In the affirmative
Issue No.4: As per final order,
For the following:
R EAS O N S
12. Issue No.1: It is contended in the plaint
that the plaintiff are the registered owner of the Trademark 'COTHAS COFFEE' and COTHAS. They have registered their trade mark Cothas Coffee(device) in registration No.324288 dated 4.4.1977 in respect of coffee in class 30, Cothas Coffee under TM.No.1061979 dated 22.11.2001 in respect of coffee powder and flavoured coffee powder, blended coffee powder(Coffee and Chicory), tea and flavoured tea, coffee substitutes containing coffee in any proportion, chicory powder included in class 30. They have registered their trademark COTHAS under TM.No.1061983 dated 22.11.2001, 'Cothas Coffee (Label)' under TM.No.1061980, 'Logo of Cothas Coffee' under TM.No.1061981 dated 22.11.2001, 'Cothas Coffee 13 O.S.No.4047/2015 Premium Blend' (Label) in TM.No.1061982 dated 22.11.2001.
13. In order to substantiate their contention plaintiff has got examined one of its partner as PW1, wherein in the affidavit filed for examination in chief he had reiterated the plaint averments. Further plaintiff has produced the trademark registration certificates which are marked as Ex.P13 to 17. Ex.P13 is the trademark registration certificate under No.1061979 in class 30 for trademark COTHAS COFFEE. Ex.P14 is the trademark registration certificate under No.1061983 in class 30 for trademark COTHAS. Ex.P15 is the trademark registration certificate under No.1061980 for COTHAS COFFEE (LABEL), Ex.P16 is the trademark registration certificate under No.1061981 in class 30 for the 'Logo of Cothas Coffee'. Ex.P17 is the trademark registration certificate under No.1061982 for the trademark Cothas Coffee Premium Blend' (Label). Ex.P18 & 19 are the Letters dtd.6.3.2015 addressed by the advocate to the plaintiff company in connection with renewal of trademark with form 12 and receipt, Ex.P34 is the Printout of ownership details of domain. The registration confer on the plaintiff the exclusive right to use the trade mark Cothas Coffee in the business of Coffee u/s.17 of Trade Marks Act.
14 O.S.No.4047/2015However, the counsel for the defendant during the course of argument has contended that the Ex.P13 to 17 contains a footnote that these certificate is not for use in legal proceedings or for obtaining registration abroad.
14. In the above circumstances, whether the plaintiff has established that it is the registered owner of Trademark and whether the Registration certificates Ex.P13 to 17 can be accepted as the evidence, we may refer to the relevant provision of law and case law on the subject. The relevant provision of law and case laws are extracted hereunder for ready reference.
The Trade Marks Act, 1999 Sec.2(1) (s) "prescribed" means prescribed by rules made under this Act:
Sec. 23 (2) On the registration of a trade mark the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.
Sec.25 (2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years 15 O.S.No.4047/2015 from the date of expiration of the original registration or of the last renewal of registration. as the case may be (which date is in this section referred to as the expiration of the last registration).
Sec. 31. Registration to be prima facie evidence of validity.--
(1) In all legal proceedings relating to a trade mark registered under this Act (including applications under section 57), the original registration of the trade mark and of all subsequent assignments and transmissions of the trade mark shall be prima facie evidence of the validity thereof.
(2) In all legal proceedings as aforesaid a registered trade mark shall not be held to be invalid on the ground that it was not a registrable trade mark under section 9 except upon evidence of distinctiveness and that such evidence was not submitted to the Registrar before registration, if it is proved that the trade mark had been so used by the registered proprietor or his predecessor in title as to have become distinctive at the date of registration.
Sec. 137. Evidence of entries in register, etc., and things done by the Registrar.--
(1) A copy of any entry in the register or of any document referred to in sub-section(1) of section 148 purporting to be certified by the Registrar and sealed with the seal of the Trade Marks Registry shall be admitted in evidence 16 O.S.No.4047/2015 in all courts and in all proceedings without further proof or production of the original.
(2) A certificate purporting to be under the hand of the Registrar as to any entry, matter or thing that he is authorised by this Act or the rules to make or do shall be prima facie evidence of the entry having been made, and of the contents thereof, or of the matter or things having been done or not done.
Sec.157(1) The Central Government may by notification in the Official Gazette and subject to the conditions of previous publication make rules to carry out the provisions of this Act.
(2) In particular, and without prejudice to the generality of the foregoing power, such rules may provide for all or any of the following matters, namely:---
(viii) the form of certificate of registration under sub- section (2), and the manner of giving notice to the applicant under sub-section (3) of section 23:
(ix) the forms of application for renewal and restoration the time within which such application is to be made and fee and surcharge if any payable with each application, under section 25 and the time within which the Registrar 17 O.S.No.4047/2015 shall send a notice and the manner of such notice under sub-section (3) of that section.
The Trade Marks Rules, 2002 RULE 2 (1) (t) "Schedule" means a Schedule to these rules;
Rule 2 (2) In these rules, except as otherwise indicated, a reference to a section is a reference to that section in the Act, a reference to a rule is a reference to that rule in these rules, a reference to a Schedule is a reference to that Schedule to these rules and a reference to a Form is a reference to that Form contained in the Second Schedule or the Third Schedule as the case may be, to these rules.
Rule 62. Certificate of registration.--
(1) The certificate of registration of a trade mark to be issued by the Registrar under sub- section (2) of section 23 shall be in Form O-2, with such modification as the circumstances of any case may require, and the Registrar shall annex a copy of the trade mark to the certificate.
(2) The certificate of registration referred to in sub-rule (1) shall not be used in legal proceedings or for obtaining registration abroad.
(3) The Registrar may issue a duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-59 accompanied by the prescribed fee. An unmounted representation of the mark exactly as shown in the form of application for 18 O.S.No.4047/2015 registration thereof at the time of registration shall accompany such request.
The Third schedule - forms to be used by the registrar.
FORM 0-2 GOVERNMENT OF INDIA TRADE MARKS REGISTRY TRADE MARKS ACT,1999 Certificate of registration of trade mark. Section 23(2). Rule 62(1) Trade Marks No.................... Date......................... Certified that the Trade Mark of which a representation is annexed hereto, has been registered in the register in the name of .....in Class.....under NO.......as of the date ..........in respect of ............ Sealed at my direction this:......day of .....20...... Registrar of Trade marks. Registration is for 10 years from the date first above-mentioned and may then be renewed for a period of 10 years, and also at the expiration of each period of 10 years thereafter. (See section 25 of the Trade Marks Act,1999 and Rules 63 to 66 of the Trade Marks Rules,2000). This certificate is not for use in legal proceedings or for obtaining registration abroad. Note- Upon any change of ownership of this trade mark, or change in address of the principal place of business or address for service in India, application should AT ONCE be made to register the change.
The Trade Marks Rules, 2017 Rule 158: The Trade Marks Rules, 2002, are hereby repealed without prejudice to anything done under such rules before the coming into force of these rules.
19 O.S.No.4047/2015Rule 56 Certificate of registration.-- (1) The certificate of registration to be issued by the Registrar under sub- section 2 of section 23 shall be on Form RG-2 and shall include the trademark. It shall bear the seal of the Trade Marks Registry.
The certificate of registration referred to in sub-rule (1) shall not be used in legal proceedings or for obtaining registration abroad. The certificate issued under section 137 shall be used for these purposes.
The Registrar may issue duplicate or further copies of the certificate of registration on request by the registered proprietor in Form TM-M accompanied by the prescribed fee:
Provided that, no such duplicate or copy of certification of registration shall be issued where such request is received after the expiry of time limit for renewal of registration and restoration of registered trademark.
FORM RG-2 GOVERNMENT OF INDIA, TRADE MARKS REGISTRY, Trade Marks Act, 1999 Certificate of registration of trademark [section 23(2), rule 56(1)] Trade Mark No..................
Date.......................
Certified that the trademark, of which a representation appears here, has been registered in the register in the name of ..................in Class(es).............. under No.....................as of the date ....................... in respect of ........................20 O.S.No.4047/2015
Sealed at my direction this:. .................day of ..............20............
Registrar of Trade marks.
Registration is for 10 years from the date first above- mentioned and may then be renewed for a period of 10 years, and also at the expiration of each period of 10 years thereafter. (See section 25 of the Trade Marks Act, 1999 and Rules 57 to 61 of the Trade Marks Rules, 2017).
This certificate is not for use in legal proceedings or for obtaining registration abroad.
Note- Upon any change of ownership of this trade mark, or change in address of the principal place of business or address for service in India, application should AT ONCE be made to register the change.
In B. Kishore Jain Vs. Navaratna Khazana Jewellers reported in MANU/TN/7802/2007 wherein it is held that:
11. The note contained under the Certificate of Registration filed as Document No.1 by the applicant/plaintiff that it shall not be used in any legal proceedings, appears to have its source in Rule 62(2) of the Trade Marks Rules. 2002. Rule 62(2) reads as follows:
"The certificate of registration referred to in sub-rule (1) 21 O.S.No.4047/2015 shall not he used in legal proceedings or for obtaining registration abroad."
But Rule 62(2) does not flow out of any express provision contained in the Act, relating to such prohibition. Therefore, to hold that Rule 62(2) contains a bar against the production of the original certificate of registration, would militate against the very concept of primary and secondary evidence.
12. In any event, the respondent/defendant has not denied the fact that the applicants plaintiff has obtained registration of the trade mark "Khazana" in respect of jewellery coming under class 14. Paragraph-5 of the counter- affidavit filed by the respondent/defendant merely proceeds on the footing that the registration of the mark obtained by the applicant/plaintiff was not valid in view of the existence of a prior registered trade mark in favour of another third party. Therefore, the respondent/defendant is not entitled to make much ado about the admissibility of Document No.1, after having admitted that the applicant/plaintiff has obtained registration of the said trade mark.
13. Though Document No.1 issued on 28.11.2005 shows that the registration of the trade mark in favour of the applicants plaintiff relates back to the date of application viz., 7.2.1991, the learned counsel for the applicant/plaintiff has also produced a letter issued by the Registrar of Trade Marks on 2.2.2006, confirming the renewal of 22 O.S.No.4047/2015 registration in favour of the applicants plaintiff for a period of 10 years with effect from 7.2.2001. Therefore, the applicants plaintiff has clearly established that the registration of the trade mark is still subsisting in favour of the applicants plaintiff. Consequently, the applicant/plaintiff is entitled to the rights conferred under Section 28 of the Act viz., the exclusive right to use the trade mark in relation to the goods under Class 14. The Certificate of Registration does not disclose any conditions and limitations by which such exclusive right of usage is circumscribed.
The Hon'ble Bombay High Court in Pidilite Industries Limited v. Poma Ex Products reported in [2017 (72) PTC 1 Bom] observed that:
87. Karnataka High Court in the case of Zino Davidoff SA Vs. Mahendra Kumar Proprietor Associate (supra) has held that Section 137 mandates that a copy of an entry in the Register certified by the Registrar and sealed with the seal of the Trade Marks Registry is sufficient enough for being admitted in evidence without production of the original and it is for the trial Court to admit this document at the time of evidence without insisting on production of original certificate. Section 137 does not place an embargo for the trial Court not to accept the true copies or copies generated through on line for consideration of interim prayer. Such prohibition is available only while admitting it in evidence and not for considering its evidentiary value at preliminary stage.23 O.S.No.4047/2015
88. Karnataka High Court held that there was no prohibition for filing a suit without production of certificate under Section 137 of the Trade Marks Act, 1999. In this case, the plaintiff has produced the certificate of registration in the plaint. The defendant itself has referred to and relied upon the said certificate. It is not the case of the defendant in the affidavit-in-reply that the plaintiff has not been granted any certificate of registration of the trademark and on that ground, the suit of the plaintiff alleging infringement of the trademark of the plaintiff deserves to be rejected or interim relief prayed by the plaintiff in the notice of motion deserves to be dismissed on that ground. In my view, the principle of law laid down by the Karnataka High Court in the case of Zino Davidoff SA Vs. Mahendra Kumar Proprietor Associate (supra) squarely applies to the facts of this case. I am in respectful agreement with the views expressed by the Karnataka High Court.
89. In my view, there is thus no substance in the submission of the learned counsel for the defendant that the plaintiff has not annexed the copy of the certificate of registration of the trademark or that the interim relief as prayed by the plaintiff shall be dismissed on that ground. The original certificate of registration can be produced as and when the oral and documentary evidence is led by the parties at the stage of trial.
However, the Hon'ble Delhi High Court, in Amrish Agarwal Vs. Venus Home Appliances Pvt. Ltd. ( in CM (M) No.1059/2018), has issued directions as under:
24 O.S.No.4047/20157. It is further directed that in trade mark infringement matters the following documents ought to be necessarily filed along with the plaint: i. Legal Proceedings certificate (LPC) of the trade mark showing the mark, date of application, date of user claimed, conditions and disclaimers if any, assignments and licences granted, renewals etc., ii. If the LPC is not available, at the time of filing of the suit and urgent orders of injunction are being sought, a copy of the trade mark registration certificate, copy of the trade mark journal along with the latest status report from the website of the Trade Mark Registry. This should be accompanied by an averment in the pleadings that LPC is applied for. Specific averment ought to be made that there are no disclaimers imposed on the mark and the mark stands renewed. Any licences and assignments ought to be pleaded;
iii. Usually, at the time of admission/denial, parties ought not to be permitted to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from public record online; iv. In the case of (ii), the party ought to file the LPC prior to the commencement of the trial, if any aspect of the trade mark registration is being disputed by the opposite side;
The present order be communicated to all the ld. District Judges by the worthy Registrar General of this Court so that the directions contained herein can be brought to the notice of the Judicial officers especially in the commercial courts. In addition, the order be 25 O.S.No.4047/2015 also communicated to the Controller General of Patents, Designs and Trade Marks (Ph:-022- 24132735, Email:- [email protected]) as also the Joint Secretary, DPIIT (Ph:- 022-23062983) to ensure that LPCs when applied for are issued without delay and in any case within a period of 30 days.
15. On the perusal of the above said provisions, it shows that as per Sec. 23 (2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry. Sec.25(2) provides that the Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period renew the registration of the trade mark. Sec. 31. provides that original registration of the Trade Mark to be prima facie evidence of validity. Sec. 137. provides that Evidence of entries in register, etc., and things done by the Registrar and sealed with the seal of the trademark registry shall be admitted in evidence in all courts without further proof or production of the original and the same shall be primafacie evidence of entry having been made.
Section 157 of the Act provides that the central government make rules carry out the provisions of the 26 O.S.No.4047/2015 act including form of certificate of registration under Sec. 23(2) & (3) and 25 (3) for renewal and restoration.
The Rule 62 of the Trademarks Rules, 2002 (Rule 56 of Trademark Rules 2017) provides for Certificate of registration in Form O-2.(Form RG2 of Trademark Rules 2017).
On the contrary Rule 62(2) of the Trademark Rules 2002 (Rule 56(2) of Trademark Rules 2017) and third schedule of Forms to be used by the registrar states that the certificate of registration referred to in Rule 62(1) of Trademark Rules 2002 (Rule 56(1) of Trademark Rules 2017) shall not be used in legal proceedings or for obtaining registration abroad.
16. Further in the case of Amrish Agarwal Vs. Venus Home Appliances Pvt. Ltd. Supra a LPC was filed at the stage of final arguments in the lawsuit. Arguments were made on behalf of both the parties. It was argued that it was impermissible to allow the LPC to be submitted at the late stage of final arguments. A counter argument was made that the renewal certificate was put on record and duly exhibited. The Court held that, in a trademark infringement matter, the court ought to be able to see the mark, and therefore, either a LPC or a Certificate of Registration along with the journal extract 27 O.S.No.4047/2015 must be submitted at the initial stage itself. Further, the court held that where the LPC is not available at the time of filing of suit and urgent orders of injunction are sought, a copy of the Certificate of Registration, a copy of trade mark journal along with the latest status sheet from the website of the Trade Marks Registry can be filed. A specific averment must be made in such cases in the plaint stating that no disclaimers are associated with the mark and the registration is duly renewed. Moreover, in such cases, the party must file the LPC prior to commencement of trial if any aspect of the trade mark registration is disputed by the opposite party. This case is also important because the court held that, at the time of admission/denial, parties will not be allowed to deny the factum of registration and other facts accompanying the registration as the same are easily verifiable from the online records maintained by the Registry.
17. However, on perusal of the entire Trademarks Act, 1999 it does not specifically prohibit production of Form O2, however, the Trademark rules states that the same cannot be used in a legal proceedings. It is settled principle of law that when the Act and Rules are contrary to each other, the Act will prevail over the Rules. On perusal of Ex. P 13 to 17 produced by the Plaintiff, these 28 O.S.No.4047/2015 documents evidently disclose that the plaintiff is the registered owner of the trademark COTHA & COTHAS COFFEE as contended by them. Furthermore, the defendant has neither specifically denied nor disputed the ownership of the trademark of the plaintiff in the written statement. The defendant has not led any evidence or not produced any contrary evidence to show that the plaintiff is not the registered owner of the trademarks. The defendant in para 2 of the written statement has contended that the alleged trademark registrations are for the mark COTHAS & COTHAS COFFEE is in respect of class 30 and as such a blanket injunction in respect of all classes of goods and services as sought it hit by Sec.28 of Trademarks Act,1999. This clearly shows that the defendant has not denied that the plaintiff is the registered owner of the trademark COTHAS & COTHAS COFFEE. The Cothas Coffee is the trade mark of plaintiff's firm which was registered in the year 2001. The labels in respect of Cothas Coffee are also registered on 22.11.2001. On perusal of the trade mark certificates No.1061979, 1061983, 1061980, 1061981, 1061982, it is evident that the plaintiff firm became the registered proprietor of trade mark cothas coffee with logo and symbol therein.
29 O.S.No.4047/2015Sec.137(2) of Trademarks Act, 1999 specifically provides that a certificate purported to be under the hand of the registrar has to any entry, matter of thing ie., authorised by this Act or the rules to make or do shall be primafacie evidence of the entry having been made. On meticulous perusal of Ex.P13 to 17 it bears the original signature of the registrar of trademarks with the seal of trademark registry in form No.2 with original hallow gram. The same cannot be termed as not admissible in the evidence. Section 31 of the Act also provides that the registration granted in favour of the plaintiff is a prima facie case of evidence of validity. It is also settled principle of law that the suit cannot be dismissed on a mere ground of technicality when the plaintiff is otherwise entitled for the relief. There may be some logic behind the rule that Form O-2 cannot be used in the Legal proceedings as it does not disclose the current status of the mark as on the date of filing the suit. This also may prohibit misuse of the certificates. Therefore, it is better to insist for Legal use certificates when the defendant has been placed exparte. However, when the suit is heavily contested, the defendant is always at liberty to disprove the contention of the Plaintiff by cogent evidence. In the present case, as discussed supra and on keeping reliance on the above 30 O.S.No.4047/2015 referred decision of Hon'ble High Court of Karnataka, this court is of the firm opinion that the plaintiff have proved by producing documentary evidence that they are the registered owner of the trademark COTHAS & COTHAS COFFEE. Therefore, I hold the issue No.1 in the affirmative.
18. Issue No.2 : It is the case of the plaintiff that the defendant is a company incorporated on 25.7.2014. The promoters as well as the directors of the defendants Mr.Girija Chandan who is the wife of Mr.C.P.Chandan and Mrs. Sathyavathi Prakas who is the wife of Mr.Cothas K Prakas both were earlier partners to the plaintiff company and retired under the retirement deed dated 23.12.2013 with the existing partners of the plaintiff namely Mr. CK.Sreenathan and C.S.Nitin. During the year 1969, plaintiff was trading in the name and style of Cothas Coffee Services and its partners were K.Krishnaveni, Cothas K Prakash, CK.Sreenathan and CK.Raghoonathan, who were children of late C.Krishnaiah Chetty. In the year 1984, plaintiff's name was changed to Cothas Coffee Co. and the constitution of the partnership was also changed. One of the partners, CK.Raghoonathan retired and Mrs. Gowri Raghoonathan was inducted into the partnership and she retired from the plaintiff firm on 21.1.2009. It is further contended on 31 O.S.No.4047/2015 23.12.2013, Cothas K Prakas and CP.Chandan retired from the plaintiff firm by relinquishing all their rights, title, interest and goodwill in the plaintiff partnership firm in favour of CK.Sreenathan and C.S.Nitin. In the said retirement deed it was specifically agreed by said Cothas K.Prakas and C.P.Chandran that they shall have no right and shall not use the plaintiff's name, trade name, patent, product names, goodwill either directly or indirectly after their retirement from their firm and that the continuing partners of the plaintiff shall have exclusive use of the goodwill and right to carry on the business of the plaintiff. Further it is stated that upon the retirement they would have no right, title and interest or upon the plaintiff's partnership firm and its assets etc., in the immovable and movable properties, leasehold rights, possessory rights, receivables, claims etc., was fully settled and no amounts are due. It is further contended that above said persons shall not engage for a period of 3 years from the date of retirement deed, in any activity similar to the activities carried on by the plaintiff, either directly or indirectly in any capacity. From 23.12.2013, the plaintiff is the sole, absolute and exclusive ownership rights to use the name and trading style Cothas Coffee Co. and the trademarks 'Cothas 32 O.S.No.4047/2015 Coffee' and 'Cothas' in respect of coffee and coffee products.
19. Plaintiff's firm carries on a highly reputed and well known business in connection with the manufacture, marketing and sale of roasted coffee, pure coffee powder, flavoured coffee powder, blended coffee powder, green coffee beans, coffee substitutes etc., under the trade mark 'COTHAS COFFEE'. They carried on said business for the past 46 years, from the year 1969. Due to high quality of its products, they have acquired tremendous goodwill and reputation in connection with the manufacture and sale of coffee and coffee products. They adopted the trade mark COTHAS COFFEE from Late Sri.C.Krishnaiah Chetty who was the founder of their business firm. They also own the domain name www.cothas.com and operates a website which displays details of their products, business and background on a worldwide basis. Their product with the trade mark 'Cothas Coffee' are extremely popular and widely distributed all over India and abroad. They manufactured and marketed approximately 1800 tons of coffee under their trade mark in India during the year 2014-15 and exported approximately 75 tons of coffee under the said trade mark. Their products in the trade mark Cothas Coffee have been extensively advertised in various media 33 O.S.No.4047/2015 including TV, Newspapers, magazines etc at the cost of Rs.2.35 crores for the period from 2002-03 to 2013-14. They have sales turnover of Rs.61.5 crores for the year 2014-15. It is further contended that after retirement, C.K.Sreenathan, CK.Nithin and Mrs.Srilatha Sreenathan as the partners of the plaintiff's firm and registered proprietors of the above trademarks.
20. It is further contended by the plaintiff that they came to know that the defendant company have filed trade mark application No.2824880 dated 13.10.2014 for the trade mark 'Cotha Giri' in respect of coffee, tea, cocoa, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, sauces, spices, ice' and the said application is still pending. The said trade mark is deceptively similar to their trade mark. The impugned trademark COTHA GIRI is identical and deceptively similar to the plaintiff's trademark COTHAS. Defendants have dropped a letter "s" from the trade mark 'Cothas' and used the word 'Cotha', which is identical to the plaintiff's trademark 'Cothas'. The addition of the word 'Giri' would not in any reduce the deceptive similarity or the confusion and deception that arise from use of such deceptively similar mark. It is further contended that the directors of the defendant company are the wives of the erstwhile 34 O.S.No.4047/2015 partners of their firm, had in the said retirement deed clearly confirmed that they have no further rights in the plaintiff's firm. The above said Cothas K.Prakas and C.P.Chandhan in collusion with their wives presently directors of defendant started the defendant company on 25.7.2014. The adoption of impugned trade mark 'Cotha Giri' by the defendant is with a dishonest intention to copy and imitate their well-known trade mark Cothas. It is further contended that Cothas K.Prakas and CP.Chandan have apparently set up their wives to start the defendant company, since the defendant company would be a separate legal entity and the directors would be hidden behind the corporate veil of the defendant company. It is further contended that that above said persons are also independently indulging in acts of infringement of plaintiff's trademark and the tort of passing off. The adoption of the impugned trademark by the defendant clearly exposed as having done with a dishonest intention to copy and imitate the plaintiff trade mark 'Cothas' and 'Cothas Coffee' and it would be lead to confusion and deception of the public, since the trademarks 'Cothas' and Cotha Giri are deceptively similar to the plaintiff's trademark 'Cothas'.
21. The plaintiff in order to prove their case got examined one of its partner as PW1, In the affidavit filed 35 O.S.No.4047/2015 for examination in chief PW1 has reiterated the plaint averments. Further to substantiate their contention, plaintiff got marked the documents at Ex.P1 to 38. Whereas the Ex.P1 is the Copy of Registration of firms. Ex.P2 is the Deed of retirement, Ex.P3 is the Certificate of chartered accountant, Ex.P4 to 12 are the Packing pouches of plaintiff. Ex.P13 to 17 are the Trademark registration certificates, Ex.P18 & 19 are the letters dtd.6.3.2015 addressed by the advocate to the plaintiff company in connection with renewal of trademark with form 12 and receipt, Ex.P20 to 33 are the Audited Balance Sheets, Ex.P34 is the Printout of ownership details of domain name of plaintiff, Ex.P35 to 39 are the Downloaded copy of status of TM No.2824880, 2893237, 2824880, 2824881 & 2824882 of defendant. Further the plaintiff has also examined one witness by name Ramesh Reddy as PW2.
22. During the course of argument learned counsel for the plaintiff Sri. Sreevatsa Subramanian, Sr. Advocate has vehemently contended that the plaintiff is the partnership firm and the defendant is the company. Sathyavathi Prakash and Girija Chandan are two directors of the defendant's company. They are the spouses of Cotha K Prakas and C.P Chandan 36 O.S.No.4047/2015 Respectively. After the father and son left the partnership firm of plaintiff, they have launched the new coffee business through their spouse within 7 months of the retirement from the partnership firm of plaintiff by using the money received from the plaintiff. They have retired from the partnership firm as per retirement deed dtd. 23.12.2013 by accepting the terms and conditions of the said retirement deed. Cothas K Prakas has also received a sum of Rs.11,74,25,000/- and C.P. Chandan has received a sum of Rs.59,90,000/- as a full and final settlement of all their claim against the firm. As per Clause 10(a) of the above said agreement, they have given up all the rights including the rights on IPR. They are also restrained from carrying out similar business either directly or indirectly for a period of 3 year. It is contended that the Trademark Cotha Giri adopted by the Defendant is deceptively similar to Cothas Coffee. Though the defendant's company name is Avighna Coffee Private Limited, they have adopted the name of Cotha Giri in order to encash the goodwill of the plaintiff. Even in the form submitted to the Registrar of Companies, they have left out the names of their husband. It is also admitted by the defendant / DW1 that they have no knowledge of coffee industry. Later in 2018 C.P.Chandan a former partner of the plaintiff firm becomes the director 37 O.S.No.4047/2015 in Defendant Company. The defendant in his cross examination has stated that she does not know Cotha Krishnaiah Setty who is her husband's grand father. The said contention is unbelievable.
23. The counsel has also referred to Sec.11 of the partnership Act and contended that the parties to the partnership by express or implied agreement can restrain the other partner from carrying on the business and the same would not amount to restraint of trade as provided u/s.27 of Indian Contract Act. The plaintiff has filed the original trademark certificates which are marked as Ex.P13 to 17. The plaintiff trademarks are registered under class 30 contained in Schedule IV of the Trademark Act refers to coffee, tea, coca, sugar, rice, artificial coffee etc. It is contended that the plaintiff has produced Ex.P34 which contains the domain name and the same is not disputed by the defendant. Ex P20 to P33 are the audited balance sheet. It is vehemently argued that the defendant's mark Cothagiri as per Ex.P35 and not the Avigna Coffee Company with user detail from 25.7.2014. The defendant in her evidence has admitted that Cothas coffee is a well-known name of coffee powder and the defendant company has been incorporated on 25.7.2014 and they have not appointed any dealers, marketing and advertising agents. Even for the question 38 O.S.No.4047/2015 put to the DW-1 that the defendant has mentioned at the backside of Package cover Ex.D5 & D6 that "we knew that a legend has been born, 60 years later today Cothagiri stays true to its rich heritage." She has given an evasive answer that she cannot answer to this question. It was argued that when the defendant company itself has started in the year 2014, it is impossible for the company to have a rich heritage of 60 years. It was argued that the act of the defendant shows the dishonest intention for encashing the goodwill of the plaintiff. It was argued that in the packing cover produced by defendant it clearly shows that the word 'COTHA' is written on the top and the word 'giri' appears below the word Cotha. If the said products are kept in the shop along with many other products, on seeing the first word Cotha on the top, it is likely to mislead the general customers that the products belongs to the plaintiff. It was also argued that the defendant had applied for registration of the word Cotha Giri under several classes. Many of Trade mark applications by the Defendants before the trade mark registry have got rejected and abandoned. It shows that they are making hectic efforts to get some trademark with a word COTHA to encash the goodwill of the plaintiff. It is also contended by the defendant in her written statement that the word 39 O.S.No.4047/2015 Cothagiri is a coined word containing the surname Cotha and the first name of Girija Chandan as Giri. However in her evidence she states that she does not know the surname name of her husband's grand father. The defendant in her written statement has contended that they are the bonafide user as provided under section 35 of the Trademarks Act, 1999 and the initial funds infused into the defendant company where independent funds bought in by the two directors themselves. However, in the evidence of DW-1 she has stated that they have not hired any project consultant for setting up of the company or for carrying on coffee business. It was argued that the defendant has not placed any records to show that they have bought any funds from the bank for the purpose of carrying coffee business. It is contented that it the money of the Plaintiff which they have used for setting up the coffee business. It is contended that former partners of the plaintiff firm, after the retirement, have indirectly have set up the coffee business through their spouses. Therefore, the contention that they are the bonafide user cannot be accepted since they have not produced any documents. It was argued that this court has granted a temporary injunction on IA No. 1 & 2 and rejected I.A.3 for vacating temporary injunction by its order dated 20.02.2016, the defendant preferred an 40 O.S.No.4047/2015 appeal U/O 43 Rule 1(r) OF CPC in MFA.No.2170/2016(IPR) before Hon'ble High Court of Karnataka. The counsel for the plaintiff has copiously read out the para 20 to 24, para 37 & 42 of the decision in MFA.No.2170/2016(IPR) and contended that the Hon'ble High Court has uphold the order of this court on finding that the plaintiff has made out a primafacie case and also observed that on a critical analysis of the facts of this case leads to an irresistible inference that the retiring partners of 'Cothas Coffee Co.' have made an attempt to circumvent clause 14 of the Retirement Deed, which placed an embargo on them from indulging in similar activities through defendant - Company promoted by their respective spouses. The counsel has also read out the provision of Section 27 to 29 of Trademarks Act, 1999, on the rights conferred by the registration, action for infringement of trademark and also contended that as per Sec.29(4)(c) of the Trademarks Act, 1999, the registered trademark has got a reputation in India.
24. The learned counsel for the plaintiff has relied on below referred decisions:
1. AIR 1988 BOM 167- Bajaj Electricals Limited, Bombay -VS- Metals & Allied Products, Bombay & Another wherein para it is held as under:41 O.S.No.4047/2015
7. It is required to be stated at the out set that in the present case the question for determination is whether the defendants are guilty of passing off and not of infringement of trade mark. It was contended by Mr. Cooper, learned counsel appearing on behalf of the respondents, that the surname of the partners of defendant No. 1 being 'Bajaj', the defendants are entitled to use their own name and unless it is established that the user was dishonest, it is not permissible to grant injunction on the ground that the user is likely to cause deception or confusion in the mind of the customers. It is not possible to accept the submission of the learned counsel. It is necessary to bear in mind that the defendant No. 1 is not using the word "Bajaj" as a trading style, but are only using the word "Bajaj" as a trade mark or a sign and such user is not permissible. It is required to be stated at this juncture that Mr. Cooper did not dispute that the plaintiffs have acquired large reputation by user of the word "Bajaj" in respect of sale of their goods, but con tended that the surname of the partners of the defendants being "Bajaj", there is no objection for the defendants' using the word by that trade sign. The reliance in this connection by Mr. Tulzapurkar on the decision of House of Lords in the case of Parker Knoll Limited v. Knoll International Limited reported in 1962 R. P. C. 265 is very appropriate. Lord Morris, while opening the speech, observed :
"In the interests of fair trading and in the interests of all who may wish to buy or to sell goods the law recognises that certain limitations upon freedom of action are 42 O.S.No.4047/2015 necessary and desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing right. In solving the problems which have arisen there has been no need to resort toany abstruse principles but rather, I think, to the straightforward principle that trading must not only be honest but must not even unintentionally be unfair."
It was further observed :
"A name may be used as a mark under which a person's goods are sold so that the name comes to denote goods made by that person and not the goods made by anyone else or even made by anyone else who has the same name. So also a mark under which a person's goods are sold may come to denote goods made by that person. The name or the mark will have acquired a secondary meaning."
The sequitur of this finding was that someone may, even by using his own name and using it innocently, make a representation that is untrue, that is a representation that goods which in fact are his are the goods of someone else. Lord Morris thereafter referred to the celebrated passage from the judgment of Justice Romer in the case of Joseph Rodgers & Sons, Limited v. W. N. Rodgers & Company reported in (1924) 41 R. P. C. 277. The passage at p. 291 reads as under : --
"It is the law of this land that no man is entitled to carry on Ms business in such a way as to represent that it is the business of another, or is in any way connected with the business of another; that is the first 43 O.S.No.4047/2015 proposition. The second proposition is that no man is entitled so to describe or mark his goods as to represent that the goods are the goods of another. To the first proposition there is, I myself think an exception : a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than to cause confusion with the business of another, and so long as he does it honestly. To the second rule, to which I have referred, I think there is no exception at all; that is that a man is not entitled so to describe his goods as to lead to the belief that they are the goods of somebody else."The House of Lords then noted the distinction drawn by Justice Romer between trading under a name and passing off of goods by the use of a name. The distinction noticed by Justice Romer was subsequently accepted as correct by Viscount Simonds and in several other decisions. Relying on this decision, Mr. Tulzapurkar urged, and in our judgment with considerable merit, that the defendants are not carrying on their trade in the name of "Bajaj", but are using the mark as a trading sign and that is not permissible. Mr. Cooper controverted the submission by relying upon the dissent voiced by Lord Denning and Lord Devlin in their speeches. It is undoubtedly true that these judges were not inclined to accept the distinction noticed by Mr. Justice Romer, but even then have clearly stated that if the use by the defendants of their own name was likely to deceive, then there would have been no defence to the action of passing off, no matter how honest and bona fide the user was. The decision of the majority of the House of Lords is good law in England for last over 25 44 O.S.No.4047/2015 years and no case has been brought to our attention where the accuracy of the principles laid down has been doubted. We see no reason at this interim stage to accept the submission of Mr. Cooper that the minority view should be preferred to that of the majority and the distinction noticed by the House of Lords should be ignored. Mr. Cooper invited our attention to a decision in the case of Turton v. Turton reported in (1889) 42 Ch. D 128, and to the decision in the case of S. Chivers & Sons v. S. Chivers & Co. Ltd. reported in (1900) 17 R. P. C. 420. The decision in the case of Turton was considered by the House of Lords in the case of Parker-Knoll Limited, and the observations in case of Chivers were based on peculiar facts of that case, and, in our judgment, it is not possible to by-pass the decision of the House of Lords by reference to these cases.
2. (2002) 2 SCC 147 Mahendra & Mahendra Paper Mills Ltd. -Vs- Mahindra & Mahindra Ltd, wherein it is held that:
This question has been considered by different High Courts and this court in umpteen cases from time to time. On analysis of the principles laid down in the decisions, certain recognised parameters relating to the matter have emerged. Without intending to be exhaustive some of the principles which are accepted as well settled may be stated, thus, that whether there is a likelihood of deception or confusion arising is a matter for decision by the court, and no witness is entitled to say whether the 45 O.S.No.4047/2015 mark is likely to deceive or to cause confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination; that broadly speaking, factors creating confusion would be, for example, the nature of the market itself, the class of customers, the extent of the reputation, the trade channels, the existence of any connection in course of trade, and others.
3. 2007 (35) PTC 548(Karn)- Adiga's Abhiruchi & Ors. -
Vs- Adiga's Fast Food wherein it is held:
12. The next question that requires consideration is with regard to the contention putforth by the defendant that since the said business is a business of the community to which the defendant belong and since the community has the common as ADIGA, the same cannot be prevented more particularly in view of the provisions contained in Section 35 of the Act. At the outset, with regard to the common name being shared by the members of the community, the said issue came up for consideration in the case of D.R. REDDY and in the case of Bajaj Electricals Ltd. cited supra.
In the first case, the Delhi High Court has held, the contention that such a name had been adapted since the name of the Managing Director of the defendant/company was Mr. Reddy cannot be accepted since the same would lead to confusion and deception and therefore the defendant was restrained from adapting the trade name REDDY. Further in the case of Bajaj Electricals also, the High 46 O.S.No.4047/2015 Court of Bombay was of the view that the contention of the defendant that the Surname of the defendant being Bajaj, the defendant are entitled to use their own name is to be rejected. That being so, the contention of the defendant that the name ADIGA being the community name, the same could be used and therefore N.K. ADIGA has been used cannot be accepted since the same would infringe the trade mark of the plaintiff. Further with regard to the contention that Section 35 of the Act would not entitle the proprietor or a registered user of a registered trade name to interfere with any bona fide use by a person of his own name or that of his place or business would not come to the assistance of the defendant not only in view of the above stated decisions but the question in the present case would be as to whether the use of N.K. ADIGA ABHIRUCHI has been done in a bona fide manner. In this regard, the Photographs produced before the Court below would indicate that at the first instance the defendant had notified by displaying the banner as ADIGA'S ABHIRUCHI would be opening shortly. The said name is a direct infringement of the trade name of the plaintiff which is a registered one. It is only after legal notice was issued by the plaintiff, the defendant had changed the name as N.K. ADIGA ABHIRUCHI and that too N.K. has been displayed insignificantly, which would clearly indicate that it has been changed only to pre- empt and overcome the protest of the plaintiff. As such the plaintiff cannot take shelter under the said provision. Even otherwise the Act provides for rectification and correction of the register vide chapter VII of the Act and as such 47 O.S.No.4047/2015 if the defendant is aggrieved by the registration of the trade mark by registering the name of the community, it would be open to the defendant to take recourse to the remedy contemplated therein and cannot make use of the provision for infringing a trade mark which is registered.
4. (2016) 4 AIR Kant. R 646 - Avighna Coffee Pvt. Ltd., Vs. Cothas Coffee Co., wherein it is held that:
In para 21 Whatever be the explanation and justification on behalf of the defendant, it is indelible on record that prior to 25.7.2014 defendant-company was not in existence. On facts, it is not in dispute that the plaintiff has been producing and marketing its product as 'Cothas Coffee' for several years. The defendant-Company is floated by the two ladies, whose respective spouses are retired partners of 'Cothas Coffee Co.' The retiring partners have covenanted not to indulge in a business similar to the 'Cothas Coffee Co.' either 'directly' or 'indirectly'. They have expressly given up the trade mark.
21. In these circumstances, they cannot be heard to contend that defendant is an independent entity created under the Companies Act and enjoys an independent right to indulge in business similar to that of plaintiff oblivious of the covenants executed by the retiring partners of plaintiff- firm.48 O.S.No.4047/2015
22. Further, the packaging material is designed in similar and deceptive manner, wherein the word 'Cotha' or 'Cothas' alone is found in the first line in both packages.
Thus, a critical analysis of the facts of this case leads to an irresistible inference that the retiring partners of 'Cothas Coffee Co.' have made an attempt to circumvent clause 14 of the Retirement Deed, which placed an embargo on them from indulging in similar activities through defendant - Company promoted by their respective spouses.
23. This appeal is against an order of temporary injunction passed on an I.A. filed under Order XXXIX Rules 1 and 2 CPC. The Trial Court has recorded following findings while passing the impugned order.
♦ that the Directors of defendant - Company are family members of ex - partners of plaintiff
- firm. They were acquainted with the trademark 'Cothas Coffee'.
♦ Examination of trademarks 'Cothas Coffee' and 'Cotha giri' shows that both are phonetically and visually similar.
24. Having perused the pleadings and re- examining the material on record, it is reasonable to presume that the defendants did have full knowledge of the trademark of plaintiff and its reputation in the market and yet, attempted to sell their product with similar name and style.
25. Further, it is settled that a Court of appeal should be slow in interfering with the discretionary orders passed by the Trial Court, even if, a contrary view is possible by an 49 O.S.No.4047/2015 appellate Court. On this point, I may respectfully recall the following passage from the judgment in the case of Wander Ltd. and another v. Antox India P. Ltd. reported in 1990 (Supp) SCC 727:
"14. The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The appellate court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion.
26. In view of above discussion, it can be unhesitatingly held that the plaintiff have made out a prima facie case and preeminently deserved interim protection by way of temporary injunction pending trial.
Hence point No: 1 is answered in favour of plaintiff.
27. Re-Point No.2:
Answer to point No: 1 being in the affirmative, the impugned order does not require any 50 O.S.No.4047/2015 interference except with a finding on compliance of Order XXXIX Rule 3 CPC which is subject matter of cross objection.
Therefore, it is contented by the plaintiff that the issue No.2 and 3 have to be answered in the Affirmative.
25. On the other hand, defendants in their written statement contended that the plaintiff has deliberately misrepresented their address. The suit itself is hit by the provisions of Sec.28 & 35 of Trademarks Act. Plaintiff failed to bring to the notice of the court the alleged trademark registration are only in the class 30, as such a blanket injunction in respect of all classes of goods and services, as sought by the plaintiff is illegal. The defendant company incorporated with main objects, being to carry on the business of cultivators, producers, growers, processors, curers, importers, exporters, dealers in wholesale, retail and distributors of coffee seeds, coffee powder, tea products, beverages, chicory, other preparations from coffee and tea, chemicals, fertilizers, pesticide, insecticide, manures required for plantations, coffee mixtures, etc. Their company is an independent legal entity, who is not a signatory to the purported retirement deed dated 23.12.2013. It is solely run by the present directors Girija Chandan and Mrs.Sathyavathi 51 O.S.No.4047/2015 Prakash. Their trade mark 'Cothagiri is different from plaintiff trade mark 'Cothas' & "Cothas Coffee". The defendant company has coined the trademark 'Cothagiri' to manufacture and market its products. The name and mark 'Cothagiri' is an invented word, which is derived from a combination of the names of one of the director's husband's family name, 'Cotha' and her own name 'Girija' and has thus been coined by her. The amalgam of two names is the invented word "Cothagiri". The word 'Cotha' means 'new' in Telugu language, which is how her husband's family was referred to when his ancestors first moved to Bangalore about 150 years ago. The word 'Giri' besides being a part of her name also means 'mountain/hill' which region where coffee is grown and it is also depicted in the device logo accompanying the defendant's mark. Their company trademark is phonetically and visually different from plaintiff mark.
Their sample packets and plaintiff's sample packets clearly indicates that there is no phonetic or visual similarity between the two marks. They are running a legitimate business and has obtained various statutory permissions and registrations as required under law. They have spent exorbitant amounts towards marketing and brand building amongst its distributors and other business associates. There are no instance of confusion 52 O.S.No.4047/2015 or deception among the customers. Merely roving expedition to harass the defendants company, plaintiff has filed the false suit and it is based on mere speculation. Their trademark COTHAGIRI is protected and permitted u/s.35 of Trademarks Act, 1999 which clearly provides that bonafide use by a person of his own name, or the name of any of his predecessor in business cannot be interfered with even by a proprietor of a registered trademark. The initial funds infused into the defendant company were independent funds brought in by the two directors themselves. On the above grounds prays for dismissal of the suit.
26. In order substantiate their contention defendant got examined its director Girija Chandan as DW1, in the affidavit filed for examination in chief she had reiterated the written statement averments. Further defendant got marked the documents at Ex.D1 to D8. Whereas Ex.D1 is Downloaded copy of certificate of incorporation. Ex.D2 is the Downloaded copy of company master data, Ex.D3 & 4 are the Memorandum & Articles of Association of defendant, Ex.D5 & 6 are the empty packets of defendant's product Cothagiri and Ex.D7 & 8 are the empty sachets of plaintiff's products.
53 O.S.No.4047/201527. The counsel for the defendant has argued that the present suit is for the infringement of trademark and not on the relationships. Whether the plaintiff and defendant are relatives etc., is not bearing upon the present case. The defendants are not denying the relationship. It is argued that the word COTHA GIRI is a coined word having a surname of directors. The name and mark 'Cothagiri' is an invented word, which is derived from a combination of the names of one of the director's husband's family name, 'Cotha' and her own name 'Girija' and has thus been coined by her. Moreover plaintiff in his cross examination has admitted that they do not have registration for the word COTHA. It is also admitted by the plaintiff that the letter C is shown with Coffee cup and the words written within C as Cothas and Coffee in Ex.P4 is belongs to plaintiff. It is also further admitted that the coffee cup or the word Cothas or word Coffee is not seen in the packing cover of the defendant. The plaintiff has also admitted the mountain device above the words COTHAGIRI in Ex.D1 is not a part of plaintiff's trademark. The plaintiff has also admitted the she has not produced any documents to show that the defendant's mark has caused a confusion and deception to the mark of the plaintiff. It is argued that the defendant has not concealed the name of husband at the 54 O.S.No.4047/2015 time of incorporation of the company as alleged by the plaintiff. As per the Director Identification Number Process, the application column does not contain the provision for providing the name of the husband of the directors. The DIN Process requires only father's name. Therefore, the question of non-disclosure of the husband's of the directors in company incorporation documents do not arise.
28. It is further argued that the defendant has adopted the family name in their coffee business and they are the bonafide user as provided u/s.35 of the Trademarks Act, 1999. Therefore, the present suit is not maintainable. It is argued that the plaintiff cannot seek for protection against all the classes under the Trademarks Act, 1999. He can seek protection only for the class under which it is registered. It is also argued that Smt. Girija Chandan and Mrs. Sathyavathi were never the partners of the plaintiff firm. Hence, there is no privity of contract between the plaintiff and these defendants. They are not bound by the terms of the retirement deed dtd.23.12.2013.
29. It is argued by the counsel for the defendant that there is no breach of retirement deed, as one of the partners of the plaintiff has joined as director of the 55 O.S.No.4047/2015 defendant company after three years of retirement from the retirement of the partnership firm.
30. The learned counsel for the defendant has relied on below referred decisions:
1) MANU/SC/0656/2014 - Precious JewelsVs.Varun Gems, wherein it is held that:
Para 10 As stated hereinabove, Section 35 of the Act permits anyone to do his business in his own name in a bona fide manner. In the instant case, it is not in dispute that the defendants are doing their business in their own name and their bona fides have not been disputed. It is also not in dispute that the plaintiff and defendants are related to each other and practically all the family members are in the business of jewellery.
11.We have perused the hoardings of the shops where they are doing the business and upon perusal of the hoardings we do not find any similarity between them.
12. In our opinion, looking at the provisions of Section 35 of the Act, there is no prima facie case in favour of the plaintiff and therefore, the defendants could not have been restrained from doing their busines. We, therefore, quash and set aside the impugned order granting interim relief in favour of the plaintiff and the appeal is allowed with no order as to costs.56 O.S.No.4047/2015
2. MANU/KA/0695/2009 - Presteege Property Developers & Ors., Vs. Prestige Estates Projects Pvt.Ltd wherein it is held that:
19. The next question would be as to whether a suit for infringement of trade mark could be filed in respect of the business falling under a different class while the existing registration is for a different class. In this regard, Section 28 of the Act would provide that the trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark. The said provision therefore makes it clear that a person can be considered as a registered proprietor only in respect of the goods or services for which the trade mark is registered and this would clarify that if the goods or services mentioned in a particular class to the schedule is registered such protection would be available only in respect of that class and relief against infringement would be available only in respect of that class. In fact, in a decision in the case of Indian Hotels Company Ltd. and Anr. v. Jiva Institute of Vedic Science And Culture :
2008 (37) PTC 468 (DEL.) rendered by a Hon'ble Division Bench of High Court of Delhi, this aspect has been adverted to and in a situation where the parties had registration in Class -16 and an application had been made in respect of Class-42 but 57 O.S.No.4047/2015 not registered, the view taken was that the protection against infringement would be only against the class in which it is registered. Therefore in the instant case, when the plaintiffs have filed the suit seeking the relief against infringement, the registration of the trade mark in Class-16 cannot enure to the benefit of the plaintiffs in respect of Class-37 and Class-42 respectively which had not been registered as on the date of the suit for the relief of infringement though it could be material against passing off in a Court having jurisdiction. In the case of MFA No. 13696/2008 even though Class-16 is pleaded and allegation of brochure of defendant is made, the ultimate grievance is against the business itself. Hence, even on that count, the benefit of Section 134(2) of the Act would not be available to institute the suit at a place where the plaintiff is carrying on the business.
The counsel has also relied on DIN Process document. The relevant portion of the document is extracted hereunder :
3. Along with the supporting documents, verification by the applicant for applying for allotment of Director Identification Number (DIN) shall also be attached. This shall contain the Name, Father's name, date of birth, present address and text of declaration and physical signature of the applicant.58 O.S.No.4047/2015
31. The plaintiff in his reply argument has contended that the defendant cannot seek protection u/s.35 of Trademarks Act, 1999 as they are using the word COTHA instead of their company name Avighna. It is also argued that the COTHAGIRI is not an invented word. It is contended that the defendant with a dishonest intention have adopted the name of COTHA in their coffee business. On the defense that the initial two directors of the defendant company are not bound by the retirement deed dtd.23.12.2013, it is contended that as per the terms of the said deed, it has prohibited the retiring partners from carrying on the similar business either indirectly or directly. However, the retired partners are carrying the business through their spouse/present defendant company. It shows the indirect involvement of the retired partners. It is contended that the word COTHAGIRI is deceptively similar to the plaintiff's trademark.
32. In the above circumstances, whether the plaintiff has established that the defendant has infringed or passed off the plaintiff's Trade mark COTHAS & COTHAS COFFEE by using offending trademark COTHA GIRI, we may refer to the relevant provision of law and the case law on the subject. The relevant provision of law 59 O.S.No.4047/2015 and case laws are extracted hereunder for ready reference.
Sec.2(1) (h) "deceptively similar".--A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;
Sec.2(1) (m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
Sec.2(1) (q) "package" includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;
(v) "registered proprietor", in relation to a trade mark, means the person for the time being entered in the register as proprietor of the trade mark;
(w) "registered trade mark" means a trade mark which is actually on the register and remaining in force;
(x) "registered user" means a person who is for the time being registered as such under section 49;
(zg) "well-known trade mark", in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark 60 O.S.No.4047/2015 in relation to the first-mentioned goods or services.
Sec. 27. No action for infringement of unregistered trade mark.--
(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
Sec.28. Rights conferred by registration.-- (1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of 61 O.S.No.4047/2015 those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.
Sec. 29. Infringement of registered trade marks.--
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
62 O.S.No.4047/2015(3) In any case falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public.
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which--
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
(6) For the purposes of this section, a person uses a registered mark, if, in particular, he--
(a) affixes it to goods or the packaging thereof;
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;
(c) imports or exports goods under the mark; or
(d) uses the registered trade mark on business papers or in advertising.
63 O.S.No.4047/2015(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
(8) A registered trade mark is infringed by any advertising of that trade mark if such advertising--
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
Sec.35. Saving for use of name, address or description of goods or services.--Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with any bona fide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bona fide description of the character or quality of his goods or services.
64 O.S.No.4047/2015Sec. 134. Suit for infringement, etc., to be instituted before District Court.--
(1) No suit--
(a) for the infringement of a registered trade mark; or
(b) relating to any right in a registered trade mark; or
(c) for passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, whether registered or unregistered, shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.
(2) For the purpose of clauses (a) and (b) of sub-section (1), a "District Court having jurisdiction" shall, notwithstanding anything contained in the Code of Civil Procedure, 1908 (5 of 1908) or any other law for the time being in force, include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or proceeding, or, where there are more than one such persons any of them, actually and voluntarily resides or carries on business or personally works for gain. Explanation.--For the purposes of sub-section (2), "person" includes the registered proprietor and the registered user.
Sec. 135. Relief in suits for infringement or for passing off.--
(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either 65 O.S.No.4047/2015 damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.
(2) The order of injunction under sub-section (1) may include an exparte injunction or any interlocutory order for any of the following matters, namely:--
(a) for discovery of documents;
(b) preserving of infringing goods, documents or other evidence which are related to the subject-matter of the suit;
(c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
(3) Notwithstanding anything contained in sub-section (1), the court shall not grant relief by way of damages (other than nominal damages) or on account of profits in any case
(a) where in a suit for infringement of a trade mark, the infringement complained of is in relation to a certification trade mark or collective mark; or
(b) where in a suit for infringement the defendant satisfies the court--
(i) that at the time he commenced to use the trade mark complained of in the suit, he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was on the register or that the plaintiff was a registered user using by way of permitted use;
and 66 O.S.No.4047/2015
(ii) that when he became aware of the existence and nature of the plaintiff's right in the trade mark, he forthwith ceased to use the trade mark in relation to goods or services in respect of which it was registered; or
(c) where in a suit for passing off, the defendant satisfies the court--
(i) that at the time he commenced to use the trade mark complained of in the suit he was unaware and had no reasonable ground for believing that the trade mark of the plaintiff was in use; and
(ii) that when he became aware of the existence and nature of the plaintiff's trade mark he forthwith ceased to use the trade mark complained of.
In Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd., reported in AIR 2002 SC 117, it is held that:
Para 24: Judging the case in hand on touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the word 'Mahindra' and 'Mahindra & Mahindra' in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create 67 O.S.No.4047/2015 an impression of a connection with the plaintiff's group of companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant-company which is yet to commence its business from utilising the name of 'Mahendra' or 'Mahendra & Mahendra' for the purpose of its trade and business.
In Dr. Reddy Laboratories v Reddy Pharmaceuticals Ltd reported in 128 CompCas 42 Delhi- the Delhi High Court has held that:
In the present suit, the Plaintiff Company which manufactured its products under the trademark "Dr. Reddy's" was engaged in the manufacture and sale of pharmaceutical products for the last over 19 years and even had overseas operations. The defendant contented that the plaintiff cannot claim any monopolist and proprietary right in a common surname such as "Reddy" and the defendant has a bona fide statutory right to use the same as it is the surname as of its Managing Director.68 O.S.No.4047/2015
The court observed that:
28. This Court is of the considered view that the pleadings of the parties and the documents placed on record prima facie establish that the plaintiff has acquired substantial trade reputation and goodwill in the trade mark "Dr. Reddy" and the defendant by adopting the trade mark "Reddy" on its pharmaceutical preparations is trying to encash upon the trade reputation and goodwill of the plaintiff Company. The use of Trade Mark/name "Reddy" by defendant on its pharmaceutical preparations is neither concurrent nor honest user. This Trade Mark has been adopted by defendant with a view to mislead the customers In Ruston and Hornby Ltd. v. Zamindara Engineering Co., reported in AIR 1970 SC 1649, wherein it is held as follows:--
"6. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act.
On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get- up of B's goods has become distinctive of them and there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham 69 O.S.No.4047/2015 L.C. in Millington v. Fox (1838) 3 My & Cr 338 held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity gave the equitable rule the "victory over the common law rule." Further held that:
In an action for infringement when the defendant's trade mark is identical with the plaintiff's mark, the court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register but something similar to it, the test of infringement is the same as in an action for passing off.
In other words, the test as to the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and, passing off actions In Kirloskar Diesel Recon Pvt. Ltd. Vs Kirloskar Proprietary Ltd. Reported in AIR 1996 Bom 149, it is held as under:
18. In passing off action, the plaintiff is not required to establish fraudulent intention on the part of the defendant and as such, it was not necessary for the respondents to establish fraudulent intention on the part of the appellants in incorporating the word 'Kirloskar' 70 O.S.No.4047/2015 as part of corporate names of 1st appellant in each of the appeals. It was even not necessary for the respondents to prove causing of actual confusion amongst the customers or public at large by the appellants adopting the word 'Kirloskar' as part of corporate names of 1st appellant in each of the appeals. What the respondents were required to establish, which the respondents have established, is a likelihood of deception or confusion.
19. An injunction to prevent the use of the word 'Kirloskar' as part of the corporate names of the 1st appellant in each appeal can be granted even at the interlocutory stage. Similar view has been taken in the case of British Bata Shoe Co. Ltd. v. Czechoslovak Bata Co. Ltd.
(64 RPC 72) (supra), and in the case of Sheraton Corporation of America v. Sheraton Motels Ltd. (1964 RPC 202) (supra) and also by this Court in the case of Poddary Tyres Ltd. v. Bedrock Sales Corporation Ltd. (supra). In the result, the order of the learned Judge granting interim injunction is upheld.
In Parker-Knoll Ltd. & Parker-Knoll (Textiles) Ltd. v. Knoll International Britain (Furniture & Textiles) Ltd. Reported in 1961 RPC 346 wherein it is held that:-
In this case, the plaintiffs had registered the trademark Parker-Knoll . It sued for its injunction and passing off the use of the word Knoll or Knoll International on the ground that that was the essential feature of the plaintiffs' name. An injunction with regard to the infringement action was directed to be qualified so as to permit bona fide user by the 71 O.S.No.4047/2015 defendants of their full name Knoll International or Knoll International Limited and with regard to the passing off action, the use of the words Knoll International was directed to be qualified by the words without clearly distinguishing their goods from the goods of the plaintiffs . Only the word. Knoll was held not to be permitted to be used by the House of Lords in appeal from the said directions.
Lord Morris Observed that "In the interests of fair trading and in the interests of all who may wish to buy or to sell goods the law recognises that certain limitations upon freedom of action are necessary desirable. In some situations the law has had to resolve what might at first appear to be conflicts between competing rights. In solving the problems which have arisen there has been no need to resort to any abstruse principles but rather, I think, to the straight forward principle that trending must not only be honest but must not even unintentionally be unfair.
Lord Morris further observed :- "A name may be used as a mark under which a person's goods are sold so that the name comes to denote goods made by that person and not the goods made by anyone else or even made by anyone else who has the same name. So also a mark under which a person's goods are sold may come to denote goods made by that person. The name or the mark will have acquired a secondary meaning."72 O.S.No.4047/2015
In Bajaj Electricals Ltd. v. Metals & Allied Products reported in AIR 1988 Bombay 1967; it is held that:
The trade mark Bajaj was used extensively with respect to electrical goods. Despite the fact that Bajaj is a personal name, the use of identical mark with respect to utensils will lead to passing-off, as these goods are sold across the same counter. The Court further held that mere fact that the articles manufactured by the contesting parties are different in nature is no answer to the claim that the defendants were guilty of passing off.
In M/s Gujarat Bottling Co. Ltd. and others v. Coca Cola Company and others, reported in 1995 AIR 2372, relevant para is reproduced herein below:-
11.In respect of a trade mark registered under the provisions of the Act certain statutory rights have been conferred on the registered proprietor which enabled him to sue for the infringement of the trade mark irrespective of whether or not mark is used. The use of the impugned mark by the defendant prima facie constitutes an infringement under Section 29(2)(a) of the Trade Marks Act, 1999.
In Ashtra IDL Ltd. v. TTK Pharma Ltd. Reported in AIR 1992 Bom 35, it is held that:
the question of delay has to be balanced against the likelihood of respondents' ultimately succeeding in the action and where the strength of respondents' prima facie case is very strong, the respondents' delay in filing the 73 O.S.No.4047/2015 action would not disentitle the respondents to the reliefs and it would be right to grant rather than to withhold interlocutory injunction prayed for. In my view, the respondents have made out a very strong prima facie case for grant of interlocutory relief and in the circumstances, I hold that delay, if any, on the part of the respondents in filing the suits docs not disentitle the respondents to interlocutory relief nor it amounts to consent, waiver or acquiescence on the part of the respondents nor even estoppel so as to disentitle the relief of grant of interlocutory relief to the respondents.
The Hon'ble Supreme Court of India in the case of M/s. Power Control Appliances v. Sumeet Mechines Pvt. Ltd., reported in 1994 AIR SCW 2760 it is held that:
So as to avail of defence of acquiescence under Section 30(1)(b) of the Act, the acquiescence must be such as to lead to the inference of a license sufficient to create a new right in the defendant. In the facts of the case, there is nothing to infer of a license sufficient to create a new right in the Appellants.
In Aktiebolaget Volvo v. Volvo Steels Ltd., reported in 1998 PTC (18 (DB) Hon'ble High Court of Bombay held that:
In a case of passing off action where the plaintiffs therein sought to restraining the defendants therein from using the word 'Volvo' or any other deceptively similar word as part of the corporate name and/or trading style of the 74 O.S.No.4047/2015 defendants so as to pass off the defendants' goods and/or business as that of the plaintiffs. On the facts of that case, it was held that the plaintiffs did not enjoy any reputation in the Indian market and the sales of the plaintiff's product in India were absolutely insignificant. It was further held that the activities and products of the plaintiffs in the defendants being different and distinct, there was no question of the defendants passing off their products as the products of the plaintiffs and there was no likelihood of deception and/or confusion amongst the traders and/or customers.
In Dainler Benz Aktiegesellshaft Vs. Hybo Hindustan, reported in AIR 1994 Delhi 239 vide para 14 it is held that:
14. There are marks which are different from other marks. There are names which are different from other names. There are names and marks which have become household words. "Benz" as name of a Car would be known to every family that has ever used a quality car. The name "Benz" as applied to a car, has a unique place in the world. There is hardly one who is conscious of existence of the cars/automobiles, who would not recognize the name "Benz" used in connection with cars.
Nobody can plead in India, where "Mercedes Benz" cars are seen on roads, where "Mercedes" have collaborated with TATAs, where there are Mercedes Benz Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead 75 O.S.No.4047/2015 that he is unaware of the word "Benz" as used with reference to car or trucks.
15. The Trade Mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide.
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 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 Vs. Borden Inc [1990] 1 All E.R. 873 It 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 76 O.S.No.4047/2015 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 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 F. Hoffmanny. V. La Roche and Co. v. Georfferv Manners and Co., AIR 1970 SC 2062 it was laid down thus:
(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 77 O.S.No.4047/2015 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.
In Sturtevant Engineering Co. Ltd. Vs. Sarabhai International Ltd. Vs. Sara Exports International reported in AIR 1988 Delhi 134 it is held that :
"In case of incorporated Company the adoption of the name is by choice whereas in the case of a natural person, the adoption of surname is not by choice and further held, the defence that a man has a right to use his personal name is not available in passing-off action. I am in full agreement with the view taken by the Bombay High Court as stated above. Hence, there is no substance in the argument advanced on behalf of the counsel for the defendants.
In JOSEPH RODGERS & SONS Ld. v. W. N. RODGERS & CO. Reported in (1924) 41 R.P.C. 277 Justice Rosser observed :-
"It is the law of this land that no man is entitled to any on its business in such a way as to represent that it is the business of another or is in any way connected with the business of another; that is the first proposition. The second proposition is that no man is entitled so to describe or mark his goods so as to represent 78 O.S.No.4047/2015 that the goods are the goods, of another. To the first proposition there is, I must think an exception; a man, in my opinion, is entitled to carry on his business in his own name so long as he does not do anything more than to cause confusion with the business of another and so long as he does it honestly. To the second rule to which I have referred there is no exception at all; that is that a man is not entitled so to describe his goods has to lead to be belief that they are the goods of somebody else."
The court has also discussed the five elements to the supposed defence of a desire of defendant to use his own name:
a. The Defendant must be using his own full name, b. He must do nothing more that causes confusion with the claimant, c. he must act honestly, d. he must in general be a natural person; e. and he must not be using the name so as to describe his goods.
The supposed defense may be lost if the defendant does not use his own name in full without abbreviations or embellishments. In particular, an individual may not in general claim any right to trade under his surname alone, or as part of a trading style, where it would involve passing-off. Failure to use one's full name may itself indicate a lack of bonafides.79 O.S.No.4047/2015
The decision of House of Lords Erven Wamink B.V. and Another v. Mis. 1. Town end & Sons (Hull) Ltd. and Another reported in 1980 Rpc 31.
The House of Lords laid down that it is essential for the plaintiffs in a passing off action to show at least the following facts :-
"(1)That his business consists of, or includes, soiling in England a class of goods to which the particular trade name applies;
(2) That the class of goods is clearly defined, and that in the minds of the public, or a section of the public, in England, the trade name distinguished that class from other similar goods (3) That because of the reputation of the goods, there is goodwill attached to the name; (4) That he, the plaintiff, as a member of the class of those who sell the goods, is the owner of goodwill in England which is of substantial value;
(5) That he has suffered, or is really likely to suffer substantial damage to his property in the goodwill by reason of the defendants selling goods which are falsely described by the trade name to which the goodwill is attached."
In Amar Singh Chawal Wala v. Shree Vardhman Rice and General Mills, reported at 2009 (40) PTC 417 (Del) (DB), wherein it was held by the Division Bench that The mark HARA QILLA was similar to LAL QILLA, GOLDEN QILLA of the plaintiff.
80 O.S.No.4047/2015In Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories; AIR 1965 SC 980, it was held as under :
In an action for infringement the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated.
American Home Products Vs Mac Laboratories, AIR 1986 SC 137 at Page 155 Para 36, it was held :
When a person gets his trade mark registered, he acquires valuable rights by reason of such registration. Registration of his trade mark give him the exclusive right to the use of the trade mark in connection with the goods in respect of which it is registered and if there is any invasion of this right by any other person using a mark which is the same or deceptively similar to his trade mark, he can protect his trade mark by an action for infringement in which he can obtain injunction.
In National Bell Co. Vs Metal Goods Mfg. Co., reported in AIR 1971 SC 898 at Page No.903 it was held as under :
―On registration of a trade mark the registered proprietor gets under section 28 the exclusive right to the use of such trade marks in relation to the goods in respect of which the 81 O.S.No.4047/2015 trade mark is registered and to obtain relief in respect of any infringement of such trade mark In Laxmikant V. Patel vs. Chetanbhai Shah, reported in AIR 2002 SC 275, it was held as under :
―A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopts a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
In M/s. Bengal Waterproof Lim. Vs. M/s. Bombay Waterproof Manufacturing Co. reported in AIR 1997 SC 1398, it was held as under :82 O.S.No.4047/2015
20.........It is now well settled that an action for passing off is a common law remedy being an action in substance of deceit under the Law of Torts. Wherever and whenever fresh deceitful act is committed the person deceived would naturally have a fresh cause of action in his favour. Thus every time when a person passes off his goods as those of another he commits the act of such deceit. Similarly whenever and wherever a person commits breach of a registered trade mark of another he commits a recurring act of breach or infringement of such trade mark giving a recurring and fresh cause of action at each time of such infringement to the party aggrieved. It is difficult to agree how in such a case when in historical past earlier suit was disposed of as technically not maintainable in absence of proper relief, for all times to come in future defendant of such a suit should be armed with a license to go on committing fresh acts of infringement and passing off with impunity without being subjected to any legal action against such future acts.
In Midas Hygiene Industries (P) Ltd. v. Sudhir Bhatia reported in (2004) 3 SCC 90, it was held that:
In case of infringement of trademark, normally an injunction must follow and that mere delay in bringing an action is not sufficient to defeat the grant of injunction in such cases.83 O.S.No.4047/2015
In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., reported in (2001) 5 SCC 73, it was observed that:
"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:
(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."
33. On the meticulous perusal of provisions and cases laws as mentioned supra, it shows that though Sec.27(1) prohibits infringement suit by unregistered Trademark owner, Sec.27(2) provides for passing off 84 O.S.No.4047/2015 action. Sec.28 of the Act confers right on a registered owner with respect to the particular goods or services under which it is registered. There is also mandatory presumption 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.31 states that registration of trademark as the primafacie evidence of validity. 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.134 provides for filing of suit before the District Courts. Sec.135 provides for relief which may be granted for passing off. Moreover, under the Trademark Act, once a person obtains a registration for its trademark for a particular good or service, he thereby has the exclusive right to use that trademark in relation to the said good or service. However, it is not the absolute right. It is a settled principle of law that a prior user of a mark whether registered or unregistered owner can maintain an action for passing off against any subsequent user of an identical mark or nearly resembling mark, including a registered owner. The same is maintainable under Section 27(2) of the Trademark Act and neither Section 28 nor any other provision of the Trademark Act bars the 85 O.S.No.4047/2015 same. In other words, registration of a trade mark is no defense to the proceedings for passing off as under
Section 27(2) of the Act.
34. Keeping in view the above settled principles, if we examine the circumstances of the present case on hand, the plaintiff in their pleading have specifically pleaded that from 23.12.2013, the plaintiff is the sole, absolute and exclusive ownership rights to use the name and trading style Cothas Coffee Co. and the trademarks 'Cothas Coffee' and 'Cothas' in respect of coffee and coffee products. It is further contended that the plaintiff firm carries on a highly reputed and well known business in connection with the manufacture, marketing and sale of roasted coffee, pure coffee powder, flavoured coffee powder, blended coffee powder, green coffee beans, coffee substitutes etc., under the trade mark 'COTHAS COFFEE'. They carried on said business for the past 46 years, from the year 1969. The oral and documentary evidence which are placed on behalf of the plaintiff substantially proves their contention that the plaintiff is running the business 1969. Even on perusal of Ex.P1 which is the copy of the registration of firms issued by Registrar of Firms, Gandhi Nagar, the said document reveals that the name of the establishment as COTHAS COFFEE CO. on 14.11.1969 vide Registration 86 O.S.No.4047/2015 No.Firm /GNR/1827/1969-70. On the other hand, it is admitted by the defendant that they have started their company under the name and style of Avigna Coffee Company in the year 2014 and no other evidence has been placed before the court to show that the defendants had started the Coffee business even prior to that of the plaintiff. Therefore, this court is of the firm opinion that the plaintiff is the prior user in respect of the name COTHA COFFEE.
35. There is a force in the argument of counsel for the defendant that the court cannot pass a blanket injunction in respect of all classes of goods and services, as sought by the plaintiff as the alleged trademark registration are only in the class 30. Even on perusal of Section Sec. 28 (1) of Trade Mark Act, it is evident that it give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade. Therefore, this court is of the firm opinion that the court cannot pass a blanket order restraining defendant on all class of goods or services other than which the plaintiff is registered. However, this will not prevent the plaintiff from seeking remedy under passing off action.87 O.S.No.4047/2015
36. It is a settled proposition of law that the plaintiff has to prove his own case and he cannot be permitted to take benefit of the weakness of the defendant. However, when the plaintiff has proved his case, the burden lies upon the defendant to disprove the case of the Plaintiff and prove his contentions by evidence.
37. The counsel for defendant Ms.B.V.Nidhishree strenuously argued that they have got a right to use the surname of the Defendant as the Trade name and the same is protected under Sec.35 of the trade mark act. As per section 35 of the Trademark Act, the Trademark Act will not entitle the proprietor or a registered user of a registered trade mark to interfere with any bonafide use by a person of his own name or that of his place of business, or of the name, or of the name of the place of business, of any of his predecessors in business, or the use by any person of any bonafide description of the character or quality of his goods or services. Therefore, it is covered under sec.35 and suit is liable to be dismissed on this ground alone. However, on meticulous perusal of the provision, it shows that only the bonafide use by a person of his own name is permitted. In the present case, the oral and documentary evidence led by both parties reveals that though the Defendants company directors 88 O.S.No.4047/2015 names are Sathyavathi Prakas and Girija Chandan. Non use of the full name and having the word Cotha in the Bigger fonts than the Giri, and non-use of the defendant company name as the trade name and not having any disclaimer that they are not associated with the plaintiff's trademark, makes it evident that the defendant is not the bonafide user. Even on perusal of backside package covers Ex.D5 & 6 which is containing of having experience of 60 years in coffee industry though the Defendant company was incorporated in 2014, and the founding directors of defendant company not having any experience in the coffee industry, makes it evident that the defendant is not the bonafide user. Therefore, the defendant cannot seek aid of this sec.35 of Trade Mark Act.
38. The contention of the Defendant that Hon'ble Supreme Court in Precious Jewels Vs.Varun Gems as stated supra is aptly applicable to this case cannot be accepted. In the said case, the case was between two separate firms consisting of members from the same family, sharing the same surname - 'Rakyan'. These firms were each engaged in the business of selling jewellery and precious stones which was also a family business. The parties' shops were also "abutting" each other. The plaintiffs in the original suit contended that 89 O.S.No.4047/2015 they had a trademark over the phrase 'Rakyan' and therefore sought an injunction to restrain the defendants from using the same for their shop. The Hon'ble High Court of Delhi had restrained the Appellant from using the trade mark 'RAKYAN'. The Appellant preferred the present appeal before the Supreme Court and the same was set aside in view of Sec.35 of the Trademark.
However, the facts and circumstance of the above case and the present case are different. In the present case, defendant company was started within the 7 months of retirement from the partnership firm of the Plaintiff. Hence, it is not applicable in the present case as the Defendant has not demonstrated bonafideness in the use of the surname as Trademark.
39. Even in the cross examination of Defendant- DW1, Defendant has admitted that they have incorporated the defendant company on 25.07.2014. Before incorporating the defendant company they have not appointed any dealers, marketing agents and advertising agents. Before incorporating the defendant company they have designed the packing covers for their products. That they are aware of the contents what were written on the packing covers.
90 O.S.No.4047/201540. Even on the perusal of the entire deposition of the Defendant it reveals that the Defendant do not have experience in the coffee industry and they are not the bonafide user of the Surname to seek protection/defense under Section 35 of the Trademark Act. The relevant portions of the deposition of the Defendant/DW-1 are extracted as below:
Question: You have deliberately mis-stated in your packing cover as could be seen in D5 and D6 that "we knew that a legend had been born, 60 years later today Cothagiri stays true to its rich heritage" though you were not at all in existence till 25.07.2014. What do you say? Answer: As of now I cannot answer this question.
Further deposed that she described myself as a professional as I have some knowledge in coffee business. I know about coffee brewing and coffee tasting.
Question: Do you hold any degree or diploma in connection to coffee business?
Answer: I hold a certificate issued by Coffee Board. The course was for one week.
It is correct to suggest that on 31.10.2014 application No. 2824880 for registration of the trademark is filed by Avigna Coffee Pvt. Ltd. For the trademark cotha giri under class 30. As the computer downloaded copy of the document admitted by the witness it is marked as Ex.P37. It is correct to suggest that 91 O.S.No.4047/2015 Ex.P37 application had been refused. We have not challenged refusal of application for registration of the trademark.
It is correct to suggest that on 31.10.2014 application No. 2824881 for registration of the trademark is filed by Avigna Coffee Pvt. Ltd. for the trademark cotha giri under class 32. As the computer downloaded copy of the document admitted by the witness it is marked as Ex.P38. It is correct to suggest that Ex.P38 application had been refused. We have not challenged refusal of application for registration of the trademark.
It is correct to suggest that on 31.10.2014 application No. 2824882 for registration of the trademark is filed by Avigna Coffee Pvt. Ltd. for the trademark cotha giri under class 35. As the computer downloaded copy of the document admitted by the witness it is marked as Ex.P39. It is correct to suggest that Ex.P39 application had been abandoned.
At present we are selling coffee powder under the name Avigna.
My husband became the partner of Avigna Coffee Pvt. Ltd. in March 2018.
Question: Why you have shown the word giri below the word cotha?
Answer: As there is no sufficient space to write word cothagiri together, the word giri is written below the word cotha.
After my marriage I have not worked with the plaintiff's company M/s Cothas Coffee in any 92 O.S.No.4047/2015 capacity. After marriage I have not worked in any coffee industry. My mother-in-law had not worked with M/s Cothas Coffee and also she had not worked with any other coffee industry.
We did not have any project consultant to start the defendant company.
Question: Did you had any estimate of the raw materials, labour, profits, funding, machines and finance?
Answer: I require sometime to answer this question.
Question: On the coffee packets of Avigna you have used the printed letters as "60 years of experience in coffee". What do you say? Answer: I need sometime to answer this question.
Our capital investment for the defendant company was around Rs.75,00,000/-. Witness volunteers we have taken a loan. Even for purchase of roasting machine we had availed loan. At the time of availing loan from Vijaya Bank we have furnished the project report and projected income and expenditure. As of now I do not remember whether the documents pertaining to the said project report and projected income and expenditure is available in the defendant company's records.
On the perusal of the entire evidence of the DW1 it shows that they do not have any experience in the coffee industry and it leads to an inference that they have used the money obtained from the plaintiff firm for the purpose of setting up of a coffee business of defendant 93 O.S.No.4047/2015 company and now they are trying to encash upon the goodwill of the plaintiff's trademark.
41. It is also a settled principle of law that though the defense of surname, family name, place etc available in an infringement action, the defense that a man has a right to use his personal name, surname, family name, place is not available in a passing off action. No man is entitled even by the honest use of his own name, so to describe or mark his goods as in fact to represent that they are the goods of another person.
42.Now appreciating the evidence of the Plaintiff and defendant on this touchstone on the aspect of the prior user and infringement or passing off of coffee business, it emerges that, the plaintiff has started their business in the year 1969 and the defendant has started their business on 25.7.2014 as per Ex.D1.
43. 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 94 O.S.No.4047/2015 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 an exclusive right to use the trademark in relation to goods or services in respect of which the trademark is registered to obtain a relief in respect of infringement. By perusing the entire material on record and in view of the proof that both plaintiff and defendant are running a coffee business, this court is of the firm opinion that the use of the word COTHAGIRI by the Defendant is deceptively similar to registered word mark and devise mark COTHAS & COTHAS COFFEE of the plaintiff. The same results in suffixing of the word GIRI to Plaintiffs dominant part of the registered trademark COTHAS COFFEE/Cothas Coffee. Therefore, the defendant has infringed and passed off its goods as that of the Plaintiff by using the offending name COTHA GIRI for the Coffee business. Hence, I answer the above issue in the affirmative.
44. Issue No.3: As plaintiff had proved that they are the registered owner of the mark COTHAS, COTHAS COFFEE and also prior user, they are entitled for the relief of permanent injunction for infringement of the trade mark as well as passing off. In the circumstances, I hold the above issue in the affirmative.
95 O.S.No.4047/201545. POINT No.4: In the result I proceed to pass the following:
ORD ER Suit of the plaintiff is hereby decreed with costs.
The defendant, their distributors, stockists, servants, agents, retailers, representatives, business associates or any other person claiming under / through them in any manner are hereby permanently restrained from infringing and passing off plaintiffs registered trade marks 'COTHAS COFFEE' and 'Cothas' by manufacturing, selling, offering for sale, stocking, advertising, either directly or indirectly any goods and in particular any coffee, tea or allied products under the trade mark 'Cotha Giri' or any other mark either in English or any other language, identical with or deceptively similar to plaintiff's registered trade marks or in any manner whatsoever.
Draw decree accordingly.96 O.S.No.4047/2015
[Dictated to the Judgment Writer directly on computer, computerised and print out taken by him, corrected and then pronounced by me in the open court, this day the 11 th September 2020.
(SADANANDA NAGAPPA NAIK) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BENGALURU A N N EXU RE
1. No.of witnesses examined on behalf of plaintiff/s :
PW1 : C.S.Nithin PW2 : Ramesh Reddy
2. No.of documents marked on behalf of plaintiff/s :
Ex.P1 : Copy of Registration of firms Ex.P2 : Deed of retirement Ex.P3 : Certificate of chartered accountant Ex.P4 to12: 9 Packing pouches of plaintiff Ex.P13 to 17: Trademark registration certificates Ex.P18 & 19: Letters dtd.6.3.2015 addressed by the advocate to the plaintiff company in connection with renewal of trademark with form 12 and receipt Ex.P20 to 33: Audited Balance Sheets Ex.P34 : Printout of ownership details of domain Ex.P35 to 39: Downloaded copy of status of TM No.2824880, 2893237, 2824880, 2824881 & 2824882.97 O.S.No.4047/2015
3. No. of witnesses examined on behalf of defendant/s :
DW1 : Girija Chandan
4. No. of documents marked on behalf of defendant/s :
Ex.D1 : Downloaded copy of certificate of incorporation. Ex.D2 : Downloaded copy of company master data Ex.D3 & 4: Memorandum & Articles of Association Ex.D5 & 6: Empty packets of defendant's product Cothagiri Ex.D7 & 8: Empty sachets of plaintiff's products XVIII Addl. City Civil Judge Bangalore City.98 O.S.No.4047/2015
Judgment pronounced in the open court vide separate order. The operative portion of the judgment reads thus;
ORDER Suit of the plaintiff is hereby decreed with costs.
The defendant, their distributors, stockists, servants, agents, retailers, representatives, business associates or any other person claiming under / through them in any manner are hereby permanently restrained from infringing and passing off plaintiffs registered trade marks 'COTHAS COFFEE' and 'Cothas' by manufacturing, selling, offering for sale, stocking, advertising, either directly or indirectly any goods and in particular any coffee, tea or allied products under the trade mark 'Cotha Giri' or any other mark either in English or any other language, identical with or deceptively similar to plaintiff's registered trade marks or in any manner whatsoever.
Draw decree accordingly.
(SADANANDA NAGAPPA NAIK) XVIII ADDL. CITY CIVIL AND SESSIONS JUDGE, BENGALURU 99 O.S.No.4047/2015