Madras High Court
Mr.A.D.Padmasingh Isaac vs / on 16 November, 2021
Author: N.Anand Venkatesh
Bench: N.Anand Venkatesh
C.S.(Comm.Div.)672 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated :16.11.2021
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit (Comm.Div.) No.672 of 2019
1. Mr.A.D.Padmasingh Isaac
Proprietor,
Aachi Spices and Foods,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai-600 040.
2. M/s. Aachi Masala Foods (P) Ltd.,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai-600 040
Represented by its Director
Mr.Ashwin Pandian .. Plaintiffs
/versus/
Naresh Jain
Proprietor,
Jain Spice and Food Products
No.8/139/C, J.P.N. Road,
Hyderabad-500 096
And also at 15-7-18/A/1, 1st Floor,
Kolsawadi, Hyderabad-500 012,
Andhra Pradesh ..Defendant
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Prayer: Civil Suit has been filed under Order IV, Rule 1 of the
Original Side Rules and Order VII, Rule 1 of the C.P.C. Read with
Sections 27(2), 29, 134 & 135 of the Trade Marks Act, 1999,
praying to pass a judgment and decree for:-
(a) granting a permanent injunction, restraining the
defendant, by itself, their servants, agents, distributors, or
anyone claiming through them from manufacturing, selling,
advertising and offering for sale of Spices, Spice powders,
Turmeric powders, Coriander powders and other food products or
other goods using the Trade Mark AARCHI or any other similar
Trade Mark or similar sounding expression or in any media and
use the same in invoices, letter heads and visiting cards or by
using any other trade mark with is in any way visually or
deceptively or phonetically similar to the plaintiffs' trade marks
AACHI and use the same in pouches, spices, spice powders,
Turmeric powders, Coriander powders and other food products or
any other goods or use the mark in invoices, letters heads and
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visiting cards or any other trade literature or by using any other
trade mark which is in any way visually, or phonetically similar to
the plaintiffs' registered Trade Mark Nos.838786, 976559,
1025304, 1025305, 1458532, 1479158, 1479159, 1595537,
1690157, 1731915, 1731939, 3370962 & 3371000 or in any manner
infringe the plaintiff's registered Trade Mark
(b) granting a permanent injunction, restraining the
defendant, by itself, its servants, agents, distributors or anyone
claiming through him from manufacturing, selling, advertising
and offering for sale of spices, spice powders, turmeric powders,
coriander powders and other food product, or other goods using
Trade Mark AARCHI and or any other similar Trade Mark or in any
media and use the same in invoices, letter heads and visiting
cards or by using any other trade mark which is in any way
visually or deceptively or phonetically similar to the plaintiffs'
Trade Mark AACHI in respect of spices, spice powders, turmeric
powders, coriander powders and other food products or use the
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C.S.(Comm.Div.)672 of 2019
mark in invoices, letter heads and visiting cards or any other
trade literature or by using any other trade mark which is in any
way visually, or phonetically similar to the plaintiffs' Trade Mark
AACHI or in any manner pass off the plaintiff's goods.
(c) directing the defendant to surrender to the plaintiffs all
the packing material, cartons, advertisement materials and
hoardings, letter-heads, visiting cards, office stationery and all
other materials containing/bearing the Trade Mark word AARCHI
and label mark or other identical trade mark used in the pouches
and packets bearing the word AACHI and label mark
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark word
AARCHI and label mark on the goods referred and decree the suit
for the profits found to have been made by the defendant, after
the defendant has rendered accounts:
(e) directing the defendant to pay to the plaintiffs the costs
to the suit, and
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(f) pass such further or other order, as this Hon'ble Court
may deem fit and proper in the circumstances of the case and
thus render justice.
For Plaintiffs :Mr.C.Daniel
For Defendant :Set exparte
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JUDGMENT
The instant suit has been filed seeking for the relief of permanent injunction restraining the defendant, his servants, agents or anyone claiming through the defendant, from manufacturing, marketing, distributing, offering, advertising for sale of spices, spice powders, turmeric powders, coriander powders and other food products or other goods using the trade mark AARCHI / or any other mark identical or deceptively similar to the plaintiffs’ registered trade marks AACHI / and has further prayed for a direction to the defendants to surrender all the materials bearing the trade mark of the plaintiffs. The plaintiffs have also sought for a direction to the 5/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 defendants for rendition of accounts.
2. The case of the plaintiffs pertain to the infringement of their registered trade mark AACHI / and passing off of the label marks. The trade mark AACHI was assigned in favour of the 1st plaintiff by one registered proprietary concern called the Aachi Masala Foods (P) on 30.03.2007. The plaintiffs state that in the year 1999, the trade mark AACHI was first applied for and registered in the name of the 1st plaintiff trading as Naveen products. The plaintiffs also stated that there are currently 178 registrations of the trade mark AACHI in various words, labels and stylized marks and the 1st plaintiff also acquired international registration (WIPO) under the Madrid protocol for the trade mark AACHI word and device under classes 29, 30 and 43 in 107 and 117 designated countries respectively. It is claimed by the plaintiffs that the label marks as a whole have been in use since 1995 and that they have 6/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 become widely famous among the trading community and the public. It is further claimed by the plaintiffs that they have been using these marks AACHI with respect to almost all the masala preparations from the commencement of their business. The plaintiffs stated that from the year 2016, they introduced new label marks across their product segments and all their marks got registered in class 30, unopposed.
3. The grievance of the plaintiffs is that in October 2019, they came across the defendant's product bearing the word mark AARCHI and label , in the same colour scheme and get up of the plaintiffs’ trade mark AACHI. It is stated by the plaintiffs that they are concerned about the label adopted by the defendant which is visually, phonetically and structurally similar to the plaintiffs' trade mark and that the defendant’s mark is a conscious copy of the plaintiffs’ marks which is widely famous thereby, leading to infringement and passing off of the goods of 7/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 the defendants as that of the plaintiffs'. The plaintiffs further stated that they have no objection for the defendant to market their product under any name other than AARCHI / and that their objection is only with respect to the copying of the colour scheme, get up and the label of their mark. The further grievance of the plaintiffs is that the defendant’s label consists of their trade mark AARCHI / written prominently inside a red oval shaped bubble, which the plaintiffs claim as the imitation of the plaintiff's device of AACHI. The plaintiff also claimed that the colour scheme used by the defendant is copied from the plaintiffs, in all the label marks in question, and that the label is consciously copied from their label with an intention of taking undue advantage of reaping the benefits without sowing. The plaintiffs also stated that the use of the red oval device in respect of the trade mark AACHI is registered in favour of the plaintiffs’ in nearly all the 45 classes and also registered in 8/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 117 countries. The plaintiffs further state that the defendant’s product is inferior in quality and substandard.
4. The defendant was served with the notice and he has chosen not to contest the suit and hence was called absent and set ex-parte by this Court through an order dated 09.11.2021.
5. The only issue that arises for consideration in the present suit is whether the defendant, by using the mark AARCHI / has infringed the plaintiffs’ trade marks AACHI / and whether the same is phonetically, visually and structurally identical to the trade mark of the plaintiffs and as to whether the plaintiff is entitled for the reliefs sought for in this suit.
6. The manager of the 2nd plaintiff company was examined-in chief as PW-1 and Exhibits P1 to P16 were marked. 9/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019
7. Heard Mrs. Gladys Daniel, learned counsel for the plaintiff. This Court has carefully considered the arguments, pleadings, evidence of PW1 and the documents relied upon by the Plaintiff.
8. On carefully going through Exhibits P6, P7, P10 and P11, it can be seen that the plaintiffs are the registered trade mark owner of the marks AACHI / . It can be seen that both the marks have distinct identity and are in usage since 1995. It can also be seen that the marks AACHI / have become a well-known mark for masala and food products. The defendant who was aware about the same decided to make use of this mark for selling the same class of goods. The defendant is passing off on the goodwill and reputation earned by the plaintiffs. The legal use certificate/ registration certificate of the plaintiff's trade mark was marked as Exhibits P7 and P13 respectively. From a 10/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 careful perusal of Exhibit P13, it is clear that the trade mark AACHI is registered and that the sole proprietor concern of the 1st plaintiff owns the intellectual property rights of the trade mark AACHI. From Exhibits P9, P10 and P11, it is clear that the 1st plaintiff continues to use the trade mark AACHI through his licensees Aachi Spices and Foods Private Limited and the 2nd plaintiff. From the above-mentioned Exhibits P9, P10 and P11, it is clear that the 1st plaintiff owns the trade mark AACHI under various labels and the 2nd plaintiff uses the same. It is very clear from exhibits marked that the red oval shaped label trade mark is registered with the plaintiffs.
9. Further, the 1st plaintiff possesses the international registration (WIPO) under the Madrid protocol for the trade mark AACHI word under classes 29, 30 and 43 in 107 countries and the same is clear from the document marked as Exhibit P14. The 1st plaintiff also possesses the international 11/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 registration (WIPO) under the Madrid protocol, for the trade mark AACHI device under the same classes in 117 countries and the same is clear from the documents marked as Exhibits P14 and P15.
10. The Hon’ble Supreme Court in Parle products (P) LTD v. J.P. And CO. Mysore reported in (1972) 1 SCC 618, while dealing with the question of deceptive similarity in the Trade and Merchandise Marks Act, 1958, held that it would amount to infringement, if the impugned mark bears an overall similarity to the registered mark. The relevant paragraph from the judgment is extracted below.
9. It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two 12/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the color scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other.
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11. Further, this court in the case of Issac Issac Mathai v. Sowkhya Way2health P. Ltd. reported in MANU/TN/2823/2013, held that adding of one or two words in a mark does not make any difference as far as phonetic similarity is concerned. The relevant paragraph from the judgment is extracted below.
60. It may also be noticed here that act of the defendant/respondent is not bonafide, though they are claiming to use the trademark "SOUKYA WAY2HEALTH", but in all their letter heads and other documents displayed "SOWKHYA" prominently, whereas "WAY2HEALTH" is not that prominent. Besides, e-mail address is also deceptively similar to that of the plaintiffs/applicants, i.e. www.sowkhya.com.
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61. It is well settled law that when there is phonetic similarity between the two names, then adding of one or two words does not make it distinct from similarity. It can therefore, be safely said that the defendants/respondents have deliberately infringed the registered trademark of the plaintiffs/applicants.
12. Exhibit P16 contains the label of the defendant. A closer look at the trade mark AARCHI / that is used by the defendant shows that it is being used for manufacturing and selling masala and food products, the same class of goods which the plaintiff’s are dealing with. This mark is structurally, phonetically and visually similar to the plaintiffs’ trade marks AACHI / . The defendant has adopted this trade mark 15/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 only with a view to exploit the commercial goodwill achieved by the plaintiffs. in fact, an attempt was made by the defendant to register the trade mark AARCHI under class 30 and an objection was made by the plaintiffs and ultimately the defendant abandoned the application. A specific averment has been made to this effect in the plaint.
13. It must be borne in mind that the consumer who purchases masala and food products will be in the category of a man of average intelligence and imperfect recollection. To such a man, there is absolutely no chance of drawing a distinction between the plaintiffs’ product and the defendant’s product. This is not a case of deceptive similarity but one of almost exact reproduction of the registered trade mark of the plaintiffs. The defendant is deliberately using the trade mark AARCHI / to mislead the members of the trade and the general public at large and he is trying to cash on the goodwill and reputation enjoyed 16/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 by the plaintiffs. A careful look at the impugned marks blatantly reveal that it is visually, phonetically and structurally identical to the plaintiff’s registered trade mark.
14. In the present case, both the parties are involved in the manufacture of masala and food products. The defendant’s mark is phonetically, structurally and visually identical to the plaintiffs’ trade mark and it is bound to cause confusion as both the products will be made available through the same trade channels and to the same class of consumers. The above discussion leads to the conclusion that the mark AARCHI / used by the defendant has infringed the plaintiffs’ trade marks AACHI / . Accordingly, the plaintiffs are entitled for the reliefs sought for in this suit. The issue framed by this court is answered in favour of the plaintiffs. 17/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019
15. In fine, there shall be a decree for permanent injunction, restraining the defendant, their servants, agents, men, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale of spices, spice powders, turmeric powders, coriander powders and other food products or other goods using the trade mark AARCHI / or any other mark identical or deceptively similar to the plaintiff’s registered trade marks AACHI / . There shall be a further decree directing the defendant to surrender all the materials bearing the trade mark of the plaintiffs. There shall be a preliminary decree directing the defendant to render true and faithful accounts of the profits earned by him by using the offending trade mark AARCHI / , from the date of filing of this suit up to the date of the judgement and decree passed in this suit.
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16. The suit is decreed by imposing costs of Rs. 50,000/- payable by the defendant to the plaintiffs.
16.11.2021 Index:Yes/No Internet : Yes/No rka List of Witness examined on the side of the Plaintiffs:-
Mr.B.Gananasambandam – PW.1 Examined in Chief on 16.11.2021.
List of Witness examined on the side of the Defendant :-
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List of the Exhibits marked on the side of the Plaintiff:-
Sl. Dated Particulars Parties to Remarks Nos Document .
1. - legal use certificate of Plaintiff Photosta trade mark Nos.838786, t copy 976559, 1025304, 1025305, 1458532, 1479158, 1479159, 1595537, 1690157, 1731915, 1731939, 3370962 & 3371000
2. 30.06.20 Certificate of Plaintiff Photosta 19/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 Sl. Dated Particulars Parties to Remarks Nos Document .
06 incorporation of Aachi t copy Masala Foods P Ltd.
3. 17.03.20 Certificate of Plaintiff Photosta 10 incorporation of Aachi t copy Spices and Foods P Ltd.
4. 06.03.20 Memorandum of Plaintiff Photosta 10 Association of Aachi t copy Spices and Foods P Ltd
5. 28.12.20 Certificate of Plaintiff Photosta 06 Commercial Tax t copy 03.01.20 Registration and Central 07 Sales Tax of Aachi Spices & Foods
6. 10.07.20 Certificate of Plaintiff Photosta 06 Commercial Tax t copy Registration of Aachi Masala & Foods (P) Ltd
7. 01.12.20 Deed of Assignment Plaintiff Photosta 06 between Abishek t copy Enterprises and Aachi Masala Food Pvt. Ltd.
8. 01.12.20 Deed of Assignment Plaintiff Photosta 06 between Naveen t copy Products and Aachi Masala Foods Pvt. Ltd.
9. 30.03.20 Deed of Assignment Plaintiff Photosta 07 between Aachi Masala t copy Foods Pvt Ltd and 20/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 Sl. Dated Particulars Parties to Remarks Nos Document .
Mr.A.D.Padmasingh Isaac trading as Aachi Spices and Foods
10. 31.03.20 Dissolution Deed Plaintiff Photosta 07 between Mrs.Rani t copy Pandian and the Mr.A.D.Padmasingh Isaac dissolving the partnership firm, Naveen Products
11. 01.04.20 Trade Mark License user Plaintiff Photosta 07 Agreement between t copy Mr.A.D.Padmasingh Isaac trading as Aachi Spices and Foods and Aachi Masala Foods Pvt Ltd
12. 21.04.20 Trade Mark License user Plaintiff Photosta 10 Agreement between t copy Mr.A.D.Padmasingh Isaac and Aachi Spices and Foods Pvt Ltd
13. 21.04.20 Trade Mark License user Plaintiff Photosta 10 Agreement between t copy Mr.Mr.A.D.Padmasingh Isaac and Aachi Masala Foods P Ltd
14. - List of Products Plaintiff Photosta manufactured and t copy 21/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 Sl. Dated Particulars Parties to Remarks Nos Document .
marketed by the plaintiffs bearing the trademark AACHI
15. - Registration certificates Plaintiff Photosta of the mark AACHI in t copy various countries around the world
16. 08.05.20 Madrid Protocol Plaintiff Photosta 17 Registration in classes t copy 29, 30, 43 with respect to the Trademark AACHI designating 107 countries valid and subsisting as on date
17. Dec Plaintiffs Advertisement Plaintiff Photosta 2006 in RITZ Magazine t copy
18. - Defendant's Product Defendant Colour Xerox List of the Exhibits marked on the side of the Defendants:-
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N.ANAND VENKATESH. J., rka 22/23 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.)672 of 2019 C.S.No.672 of 2019 16.11.2021 23/23 https://www.mhc.tn.gov.in/judis