Madras High Court
Auroville Foundation vs Ramaniyam Real Estates Private Ltd on 2 February, 2017
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 18.01.2017
Pronounced on : 02.02.2017
CORAM
THE HON`BLE MR.JUSTICE N.SATHISH KUMAR
C.S.No.723 of 2013
Auroville Foundation
Represented by its Secretary
Auroville Foundation Bhawan,
Administrative Area,
Auroville 605 101. .. plaintiff
vs.
Ramaniyam Real Estates Private Ltd.,
Rep. by its Managing Director,
No.17/35, 2nd Main Raod, Gandhi Nagar,
Adyar, Chennai 600 020. .. Defendant
Civil Suit filed under Order IV Rule 1 of Original Side Rules 1956 read with Order VII Rule 1 CPC praying for the following judgment and decree against the defendant.
a) for granting perpetual injunction restraining the defendant, its business associate, servants, agents, representatives, successors or any of them from in any manner promoting selling any projects or services in any manner enabling to pass-off defendant's projects or services as that of the plaintiff's projects by using words which are deceptively similar to the plaintiffs' name namely AROVILLE in any manner and anywhere in India including the City of Chennai;
b) for mandatory injunction directing the defendant to desist and cease usage of the name AUROVILLE by removing the sign board fixed by the defendant at the project site at;
c) to award damages of Rs.17,00,000/- to the plaintiff for the loss caused to the plaintiff due to the deceptive use of the plaintiff's name by the defendant;
d) to pass a preliminary decree in favour of the plaintiff directing the defendant to render the profits made by use of the name AUROVILLE in the project site similar to the name of the plaintiff awarding the amount of profits thus found to have been made by the defendant and
e) costs of the suit;
For plaintiff : Ms.Rohini Ravikumar
For Defendant : Mr.C.Prasanna Venkatesh
J U D G M E N T
The suit is filed for granting of permanent injunction restraining the defendant, his associate, servants, agents etc. from any manner preventing selling any projects or services in any manner enabling to pass off a project as that of the plaintiff's projects by using the plaintiff's name in any manner and also for mandatory injunction for removal of the board in the project site and also for damages and accounts.
2. The brief facts of the case of the plaintiff are as follows:
The plaintiff, Auroville Foundation, is the administrative body of AUROVILLE, an international cultural township situated in the outskirts of Pondicherry. The plaintiff enjoys worldwide recognition through UNESCO and is known for promoting international understanding, world peace, human unity and spiritual pursuits. The plaintiff foundation was established on 29.1.1991 to make long term arrangements for the better management and further development of Auroville township founded by the Mother of Sri Aurobindo Ashram in 1962 for realizing Human Unity. Considering the importance of the project of plaintiff, the Central Government notified AUROVILLE under the Emblems and Names (Prevention of Improper Use) Act, 1950 vide Notification No.276(E) dated 28.02.2000 under Emblems and Names (Prevention of Improper Use) Act. The name AUROVILLE has tremendous value and is associated with trust and excellence. The plaintiff has also won many coveted titles and awards over the years. The name AUROVILLE has been used since its inception on 28th February 1968, continuously and openly without any interruption whatsoever. By reason of its distinctiveness and high quality standards maintained by 'Auroville' in its goods and services and goodwill in India and abroad, the plaintiff alone is entitled to use the name AUROVILLE. The public at large always associate and relate the name AUROVILLE to the goods and services of the plaintiff and none else. The defendant has willfully and in a malifide manner used the name of the plaintiff for its project with a sole intention to make use of the goodwill and reputation of the plaintiff. The defendant has willfully and in a malafide manner used the plaintiff's name AUROVALLIE with a view to earn mileage out of the plaintiff's goodwill and reputation in the market. The defendant's use of the name of 'Auroville' is therefore, unfair, dishonest and not bonafide. The plaintiff sent a letter dated 02.04.2012 requiring the defendant to cease using the name of the plaintiff for its construction project and the same has been received by the defendant. The act of the defendant in adopting the word 'Aroville' for its project is detrimental to the distinctive character and reputation of AUROVILLE, apart from causing confusion and deception in the market as well as in the minds of the customers. Such adoption of a protected name is nothing but an attempt by the defendant to trade upon the reputation and goodwill of the plaintiff. Hence, the suit.
3. Brief contentions of the written statement filed by the defendant :
The defendant is a reputed company formed in the year 1986 and has earned the reputation of successfully completing over 225 building projects and has also earned a reputation in the industry for its integrity and commitment. It is the contention of the defendant that the Central Government has not notified Auroville as mentioned therein but specifically notified the name and emblem. Now, the name coupled with the emblem together represent the plaintiff and not otherwise as claimed by the plaintiff. The notification has been well thought of and hence the emblem and name had been coupled because it was felt that if the name alone or any of its variant is used could denote a geographical region in Villupuram district or a meaning the language provides as used, but certainly would not indicate or imitate the plaintiff in any manner. The defendant has never misused the name with emblem of the plaintiff as notified by the Government but the term used was Ramaniyam Auroville and not per se Auroville or its symbol. The defendant has always given Indian names for its projects such as Mansarovar, Aravalli etc. The defendant was always relying on the term Ramaniyam which name by itself was sufficient for marketing its projects and did not depend upon the plaintiff to market anything. The defendant is also a famous entity and there is no cause for confusion amongst anyone except the plaintiff and he has approached this Court with a misconception about an imaginary passing off. The defendant has not gained any commercial or monetary or any other benefit by using the suffix Auroville along with Ramaniyam for one project. The plaintiff has not suffered any loss or damage or injury whatsoever in any manner and has no basis for claiming any relief from the defendant. Hence, prayed for dismissal of the suit.
4. On the above pleadings, the following issues were framed by this Court :
1. Whether the plaintiff enjoys a world wide reputation as a planned township?
2. Whether the name Aroville is distinctive and unique?
3. Whether the plaintiff does not enjoy statutory protection of its name under the Emblems and Names (Prevention of Improper Use) Act, 1950?
4. Whether the defendant's defence that only both name and emblem are protected under the Emblems and Names (Protection and Improper Use) Act 1950 be sustained?
5. Whether the use of plaintiff the name Auroville on the project developed by the defendant, is deceptive and create confusion in the mind of the customers?
6. Whether the defendant's use of the name Auroville is not unfair, dishonest and malafide?
7. Whether the plaintiff is not entitled to the relief of a perpetual injunction restraining the defendant, its business associate, servants, agents, representatives, successors or any of them from in any manner promoting selling any projects or services in any manner enabling to pass off defendant's projects or services as that of the plaintiff's projects by using words which are deceptively similar to the plaintiff's name in any manner and anywhere in India including the City of Chennai?
8. Whether the plaintiff is not entitled to the relief of a mandatory injunction directing the defendant to desist and cease usage of the name AUROVILLE by removing the sign board fixed by the defendant at the project site?
9. Whether the plaintiff is not entitled to the damages of Rs.1,70,00,000/- for the loss caused to the plaintiff due to the deceptive use of the plaintiff's name by the defendant?
10. Whether the plaintiff is entitled to the relief of a preliminary decree in their favour directing the defendant to render the profits made by use of the name AUROVILLE in the project site situated at similar to the name of the plaintiff?
11. Whether the plaintiff is entitled for any other relief under the facts and circumstances of the case?
5. The plaintiff is examined as P.W.1 and Ex.P.1 to P.6 were marked on the side of the plaintiff. On the side of the defendant, D.W.1 was examined and Ex.D1 was marked.
Exhibits produced on the side of the plaintiffs:
S.No. Exhibits Date Description
1. P-1 25.01.2006 Authorisation resolution
2.
P-2
--
The copy of Auroville Foundation Act
3. P-3 20.07.1999 The notification
4. P-4 22.01.2010 The webshots and photographs showing that the defendant has been marketing its goods and services under the name Auroville along with the CD
5. P-5 14.06.2013 Copy of legal sent by the plaintiff to the defendant along with acknowledgment
6. P-6
---
Three photographs Exhibits produced on the side of the defendant:
S.No. Exhibits Date Description of documents
1. D-1 01.06.2016 Authorisation letter along with photocopy of the minute book Witnesses examined on the side of the plaintiffss:
P.W.1. - Vinodhini Witnesses examined on the side of the defendant D.W.1 S.V.K.Sundar
6. The learned counsel appearing for the plaintiff submitted that the plaintiff's name is protected and notified under the Emblems and Names (Prevention of Improper Use)Act 1950 besides there is a Special Act for the plaintiff passed in the year 1968. The plaintiff foundation has gained reputation and goodwill all over the world. The word 'Auroville' has been used by the plaintiff from the year 1968 continuously. The said name also enjoys a statutory protection in addition to the common law of protection. The name 'Auroville' is distinctive name of the plaintiff foundation and has maintained the above name in its services and goodwill in India and abroad. The defendant promoted his business by using the plaintiff's name and constructed buildings which is not permissible under law. The contention of the defendant that only the name and emblem put together represent the plaintiff and not otherwise cannot be sustained in law. Even assuming passing of remedy is not available, even then under the common law remedy in view of the distinctive character of the plaintiff, the name which is statutorily recognised, the plaintiff is certainly entitled to protect its name from others misusing the same. The name and emblem should be read disjunctively. Hence, submitted that the evidence of P.W.1 and Ex.P.1 to P.6 clearly proves the violation of the name of the plaintiff by the defendant. Hence, prayed for a decree in the suit.
7. The learned counsel appearing for the defendant submitted that defendant is a builder and they are engaged in the business from the year 1986. Only the name and emblem notified under the Act constitute distinctive name of the plaintiff. Otherwise, there will not be any breach in using the name 'Aurovallie'. The defendant has constructed his building in the name of 'Ramaniyam Aurovallie'. The plaintiff foundation particularly neither involved in private activities nor is a private organisation. They are not doing commercial activities and is not a business entity. The plaintiff name is also not registered in under the Trade Mark Act 1999. Therefore, it is contention of the learned counsel that there is no passing of goods or service provided by another person. Further, it is the contention of the learned counsel that the suit has been instituted by one person who has been authorised by the Secretary and he has no power to institute the suit. No documents have been filed to show any legal claim that the plaintiff name is used in business and the suit is not maintainable and prayed for dismissal of the suit.
8. Now this Court has to analyse the issues one by one.
9. Issue Nos.1 to 4 :
P.W.1 Vinodhini, Executive Assistant of the plaintiff foundation has given evidence about the statutory recognition to the name 'Aurovallie' of the plaintiff foundation. She has also stated about the notification issued by the Central Government under the Emblems and Names (Prevention of Improper Use) Act 1956. The defendant has no dispute with regard to the notification issued by the Central Government under the said Act to protect the emblem of the plaintiff. P.W.1 has also stated that the plaintiff foundation has acquired reputation not only in India but also abroad. They have also acquired reputation and goodwill. It is the specific case of the plaintiff that the name 'Aurovallie' belongs to the plaintiff foundation.
10. In this regard, Exhibits filed by the plaintiff when carefully read, Ex.P.1 is the Act No.50 of 1988 called the Aurovallie Foundation Act. The Act itself clearly provide for the acquisition and transfer of the undertakings of Aurovallie and to vest such undertakings on a foundation established for the purpose with a view to make long-term arrangements for the better management and further development of the Aurovallie in accordance with the original charter and for matters connected therewith or incidental thereto. Further a reading of the Act also clearly show that the Aurovallie was integrated by the Mother on the 28th in February 1988 as an international cultural township. From the above Act, it is very clear that the word Aurovallie has a distinctive name to promote international cultural township. Sections 3 and 23 of the Emblems and Names (Prevention of Improper Use) Act, 1950 reads as follows : -
Section 3 :
Notwithstanding anything contained in any law for the time being in force, no person shall, except in such cases and under such conditions as may be prescribed by the Central Government use, or continue to use, for the purpose of any trade, business, calling or profession, or in the tile of any parent, or in any trade mark or design, any name or emblem specified in the Schedule or, any colourable imitation thereof, without the previous permission of the Central Government or of such officer of Government as may be authorised in this behalf by the Central Government. Section 23 The name and emblem of the 'Auroville' consisting of two concentric circles; the inner circle is joined to the outer circle with five equidistant radial lines to form five petals; one of the radial lines is oriented vertically downwards. An inner dot is placed at the center of the symbol. The petals may be shaded in orange or any other colour, or may be unshaded. On a reading of both the sections, it is very clear that the emblem is only for 'Aurovallie' township. A reading of the Act very clearly show that the word 'Aurovalie' has a distinct character and specifically protected for the use of the plaintiff only. No other persons have a right to use the particular name 'Aurovallie'.
11. It is the contention of the defendant that the emblem and the name had been coupled because it was felt that if the name alone or any of its variant is used could denote a geographical region in Villupuram District or a meaning the language provides as used, but certainly would not indicate or imitate the plaintiff in any manner. This contention of the defendant that the name is contained in geographical region in Villupuram District is also falsified by seeing notification relating to the geographical position of the Villupuram District. The name 'Aurovallie' does not find any of the place in Villupuram District. With regard to the name of 'Aurovallie', judicial notice is also taken on the publication of the Government with respect of the Villupuram District. Therefore, this Court is of the view that the word 'Aurovallie' is distinctive in character and meant for the purpose of the plaintiff alone for various activities for promoting the international cultural township. Therefore, the contention of the defendant that the name coupled with emblem alone together represent the plaintiff cannot be sustained. In fact, the emblem itself coined for the word 'Aurovallie' and the word 'Aurovallie' is also used from the beginning and also given statutory recognition. The defendant cannot take the defence that there is no passing of service of the plaintiff. The evidence of P.W.1 clearly establish that the word 'Aurovallie' has a very good reputation besides 'Aurovallie' Foundation Act itself clearly show that only due to such recognition, the entire reputation has been obtained by the plaintiff. The Act itself came to be passed to preserve the undertaking of the foundation, indicating two acts, one for protecting its emblem and another for better management and further development of the Aurovallie Foundation. The name 'Aurovallie' itself proves the fact that the name 'Aurovallie' is distinctive and unique which was used by the plaintiff foundation from the date of its inception. Accordingly these issues are answered in favour of the plaintiff.
12. Issue Nos.5 to 8 :
As decided earlier, the plaintiff has established that the name 'Aurovallie' is the distinctive and unique name of the plaintiff and the defendant has also admitted in his pleadings that he has used the name 'Ramaniyam Aurovallie' in one of its projects. The above admission of the defendant himself in his pleadings clearly establish the fact that the defendant has used the word 'Aurovallie' by suffixing the same with their original name Ramaniyam. From the reading of Aurovallie Foundation Act 1958 clearly indicate that the name 'Aurovallie' has gained so much of importance, goodwill and reputation all over the world. The name 'Aurovallie' is known in the international level as a cultural township. P.W.1 in her evidence has also clearly spoken about the services provided by the plaintiff foundation. The plaintiff foundation is also involved in construction of building, though not for commercial purpose, for developing their foundation. With their distinctive name which has acquired reputation all over the wold, imitating the same name by others clearly indicate that the same has been done for the purpose of misusing the name of the plaintiff to promote their business. In fact, the defendant by projecting the name of the plaintiff has represented his project as that of the plaintiff foundation.
13. Passing of action depends upon the principle that no body has right to represent his case as a case of some body. In other words, any man is not supposed to sell his goods or service under the pretense that they are those of another person. Projecting the name of the plaintiff, which has a good reputation all over the world, clearly indicate that the same has been done to sell his project. Such course adopted by the defendant is nothing but misrepresentation. When a builder use such unique name of the plaintiff, the customers would be easily under the belief that those projects were that of the plaintiff foundation. P.W.1 also in her evidence has admitted that the plaintiff foundation is also involved in construction activities. Such being the case, if the defendant adopts the name of the plaintiff to promote his business, the same is nothing but misleading the public to sell his project as that of the plaintiff. Such an act on the part of the defendant is nothing but passing of service of the plaintiff. It is the contention of the learned counsel for the defendant that as the plaintiff is not involved in any commercial activities and passing of the action is not maintainable. Of course, the name 'Aurovallie' is not registered under the Trade Mark Act. The plaintiff is also not involved in business activities in selling flats. But fact remains that the plaintiff foundation is a cultural township and its activities not only involves in promoting cultural township but involved in various activities including the service to various people and such service is also for construction of the building in the township. Therefore, merely because such services are not made commercially, it cannot be stated by the defendant that action for passing of services cannot be maintainable. The definition of the trade mark in the Trade Mark Act 1999 is as follows :
(zb) : "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;
14. A reading of the above section will clearly shows that the Trade Mark not only relate to the goods, but also services of one person from those of others. Therefore, the evidence of P.W.1 clearly establish that the plaintiff foundation also involves construction of buildings for their purpose. The above activities of the plaintiff can be construed as service provided to the beneficiary under the Aurovallie Foundation Act. Therefore, the defendant cannot adopt the similar mark of the plaintiff which has acquired world wide reputation to develop his business. Though it is the contention of the defendant that he has only suffixed the word 'Aurovallie' for his project along with the word Ramaniyam, the word 'Aurovallie' distinctively and phonetically similar to the plaintiff's name, which will easily create a confusion among the customers and make them to believe that the project itself belong to the plaintiff. In such a scenario, the name of the plaintiff will be jeoparadiced. Therefore, I am of the view that the defendant is not entitled to use the name of the plaintiff in any of their projects. Accordingly, the plaintiff is certainly entitled for permanent injunction to protect their name 'Aurovallie'. The defendant in his cross examination has also admitted the use of the name 'Aurovallie' in one of their projects. Now, it is the contention of the defendant that they removed the name 'Aurovallie'. The above said name Aurovallie is also deceptively similar to the name of the plaintiff. Therefore, the defendant's cannot take a shelter on that ground also.
15. It is the stand of the defendant that flats are already sold and the subsequent purchasers have to remove the sign board. To countenance the above evidence that the flats were sold to various people, no evidence is forthcoming. The defendant having admitted in the pleadings as well as in the evidence that they used the name of the plaintiff in the board in their projects, they are bound to remove the same. Accordingly, this Court hold that the plaintiff is entitled for permanent injunction as well as mandatory injunction as prayed for. Accordingly these issues are answered.16. Issue Nos.9 to 11
As far as the damages is concerned in a suit for passing of service, the plaintiff has to demonstrate special damages suffered by it before the Court. But, no evidence, whatsoever, is before this Court. Further, it is to be noted that the plaintiff is not a commercial entity. Their project is not for sale. That apart, the defendant has also fairly admitted in the written statement that in only one project they have suffixed the name 'Aurovallie'. Thereafter, they stopped it. In the above background, it is for the plaintiff to establish the special damages. As the plaintiff is not involved in commercial activities in selling flats, this Court is of the view that the plaintiff cannot claim damages. Particularly, when the evidence on the side of the plaintiff is also absent for claiming special damages. Though it is admitted by the defendant that some of the flats were sold to third parties, even though no documentary evidence has been produced by the defendant in this regard, mere admission in this regard about the selling of some of the flats to third parties, is not sufficient to prove the alleged damages suffered by the plaintiff. It is for the plaintiff to establish the damages. Admittedly goods were not involved, only the name of the plaintiff was used in one project. Hence, this Court is of the view that the plaintiff has not established the case for claiming such huge damages. Similarly, the profits allegedly made by the defendant and accounts also cannot be ordered to be submitted by the defendant. The defendant has suffixed the name 'Aurovallie' along with 'Ramaniyam' only for one of its projects. It is also the evidence of D.W.1 that the defendant also constructed many buildings in various names. If that is the case, mere sale of some of the flats in one of the project itself cannot be a ground to presume that only because of the plaintiff's name, the flats were sold. The defendant was already in the same business from the year 1986. Therefore, this Court hold that the defendant cannot be ordered to submit accounts. According, the issues are answered against the plaintiff.
17. In the result, the suit is decreed for permanent injunction restraining the defendant , its business associate, servants, agents, representatives, successors or any of them from in any manner promoting, selling any projects or services in any manner enabling to pass-off defendant's projects or services as that of the plaintiff's projects by using words which are deceptively similar to the plaintiffs' name namely AROVILLE in any manner and anywhere in India including the City of Chennai and mandatory injunction to remove the sign board with costs. In respect of the damages and other reliefs, the suit is dismissed.
02..02..2017 vrc Index : Yes Internet: Yes N.SATHISH KUMAR, J vrc C.S.No.723 of 2013
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