Madras High Court
S.Syed Mohideen vs P.Sulochana Bai on 7 June, 2013
Author: T.Raja
Bench: T.Raja
BEFORE THE MADURAI BENCH OF THE MADRAS HIGH COURT DATED: 07/06/2013 CORAM THE HONOURABLE MR.JUSTICE T.RAJA A.S.(MD) No.62 of 2011 and Cross Objection (MD) No.36 of 2012 A.S.(MD) No.62 of 2011 S.Syed Mohideen .. Appellant vs P.Sulochana Bai .. Respondent Memorandum of Grounds of First Appeal under Section 96 of the Civil Procedure Code against the judgment and decree dated 20.4.2011 in O.S.No.25 of 2008 on the file of the Additional District Judge cum Fast Track Court No.I, Tirunelveli. !For Appellant ... Mr.G.R.Swaminathan ^For Respondent ... Mr.S.Balasubramanian Cross Obj.(MD) No.36 of 2012 P.Sulochana Bai .. Cross Objector vs S.Syed Mohideen .. Respondent Memorandum of Grounds of Cross Objection under Order 41, Rule 22 read with Section 96 of the Civil Procedure Code against the judgment and decree dated 20.4.2011 in O.S.No.25 of 2008 on the file of the Additional District Judge cum Fast Track Court No.I, Tirunelveli. For Cross Objector ... Mr.S.Balasubramanian For Respondent ... Mr.G.R.Swaminathan :JUDGMENT
The present first appeal by the unsuccessful defendant has been directed against the impugned judgment and decree passed by the learned Additional District Judge cum Fast Track Court No.I, Tirunelveli in O.S.No.25 of 2008 dated 20.4.2011, in which the suit filed by the respondent/plaintiff, who is the owner of Tirunvelveli Iruttukadai Halwa Shop, for the grant of decree of declaration, permanent injunction and other reliefs was decreed as prayed for, however, the relief sought for by the respondent/plaintiff for rendition of accounts by the defendant was denied. The cross objection has been filed by the respondent/plaintiff as against the denial of relief of rendition of accounts by the defendant.
2. The facts in brief leading to the filing of the first appeal and the cross objection are as follows. For convenience, the parties will be referred to as "the plaintiff' and "the defendant" in this order. The father-in-law of the plaintiff by name Mr.R.Krishna Singh started the business of selling halwa in the year 1900 at East Car Street, Tirunelveli Town. After the death of Mr.R.Krishna Singh, the respondent's husband late K.Bijili Singh, who is the son of Mr.R.Krishna Singh, continued the business till his death in the year 2000. After his death, the plaintiff, who is the daughter-in-law of late Mr.R.Krishna Singh, continued to carry on the business of selling halwa. It was also claimed that the product of halwa assumed an unique name of 'Iruttukadai Halwa' not only at Tirunelveli in Tamil Nadu region, but also in other parts of India as well as in foreign countries. It was further claimed that from the year 1900 till now, 'Iruttukadai Halwa Shop' used to be open only at 5.00 p.m., or 5.30 p.m., and would remain open till 10.30 p.m., or 11.00 p.m., each day and only one item is being sold viz., halwa. Since the quality of halwa assumed significance for the reason that even after the consumers purchased the halwa from Iruttukadai and stored the same in their homes, the taste and quality lasted longer and in view of maintaining such good quality, the consumers used to call this shop as 'Iruttukadai Halwa Shop'. In the long run, the word 'Iruttukadai' became the name of the shop. Since the halwa sold by Iruttukadai is considered as high quality and its taste lasts longer, in the beginning of 1900, when the shop was opened, only one oil lamp used to be lit in the centre of the shop. Due to passage of time, today in the place of oil lamp, the shop is illuminated with a 40W bulb. Unlike other shops, no other illumination is made in the shop in question as decoration. While so, the defendant's father, zealous for the goodwill enjoyed by the plaintiff from the public and the proceeds emanated from the sale of halwa, started a shop in the name of 'Raja Sweets' just opposite to Tirunelveli Railway Station and sold halwa along with savouries. Subsequently, the defendant also opened one another shop next after the plaintiff's shop in the name of 'Nellai Raja Sweets' and sold all other eatables by decorating the shop with fancy lights. However, the proceeds of the plaintiff has not shown any decline. After sometime, the defendant again opened yet another shop at No.1/1A, Therkkuvasal opposite to Tirunelveli Railway Station in Madurai road in the name of 'Tirunelveli Iruttukadai Halwa' to deceive the public that the plaintiff has opened another shop in the above said address by giving advertisement in Tamil Murasu newspaper daily on 26.6.2007. Some of the public, after seeing the advertisement made in the above said newspaper daily, started enquiring the plaintiff as to whether any other shop has been opened in the name of Iruttukadai Halwa. As the plaintiff has no other shop, the plaintiff issued a lawyer's notice on 20.7.2007 calling upon the defendant not to use the plaintiff's trade mark for selling their sweet and savouries, since the plaintiff has also registered under the Trade Marks Act in the name of 'Iruttukadai Halwa'. The defendant also sent a reply on 30.7.2007 refusing to stop the selling of halwa. Even after informing the defendant that the plaintiff had already registered their trade mark in T.M.1 form under Section 25(2) of the Trade Marks Act, 1999, the defendant continued to carry on the halwa business in the name and style of Tirunelveli Iruttukadai Halwa. When the defendant has commenced adopting the identical and deceptive trademark for selling halwa in the name of Tirunelveli Iruttukadai Halwa, the defendant deliberately made attempts to deceive the general public and made them to believe that the sweet and savouries sold at the defendant's shop has connection with the plaintiff's Iruttukadai halwa. When the defendant has no manner or right to offend the trade mark of Iruttukadai halwa, the plaintiff was constrained to file the suit for the reliefs as stated already.
3. A detailed written statement was also filed by the defendant stating that the plaintiff cannot claim any exclusive right over the name Iruttukadai halwa, for the reason that when the plaintiff has not used any name board in the name of Iruttukadai halwa and no where they had advertised the name, it is not open to the plaintiff to claim that the halwa manufactured in their shop alone has got the sweet taste, forgetting for a minute that every halwa manufactured in Tirunelveli by using Tamirabarani river water will give the same taste, quality and last longer. Therefore, the entire credit will go to the water flown in Tamirabarani river. Further, it was also pleaded that when the defendant having run the halwa shop business for 40 years in the same place in the name of Raja Sweets and the shop of the defendant is situated five kilometres away from the plaintiff's shop, the question of cheating the public does not arise at all. When the defendant alone has got the name board in the style of Tirunelveli Iruttukadai Halwa, the plaintiff, having not displayed any name board either in front of their shop or anywhere in Tirunelveli city, there is no question of making allegation that the defendant is attempting to deceive the public by using the name of the plaintiff's shop. Also the carry bag used by the defendant with the name 'Raja Sweets' has got a different colour with different picture showing the telephone number. Further, it was pleaded that the defendant also have registered under Section 25(2) of the Trade Marks Act, 1999 with the specific name as Tirunelveli Iruttukadai Halwa. Therefore, when the Registrar under the Trade Marks Act has accepted the application filed by the defendant for registration of their trade mark in the name of Tirunelveli Iruttukadai Halwa and issued the trade marks certificate dated 9.4.2008, the plaintiff has no right to file the suit. Therefore, the suit wrongly filed by the plaintiff shall be liable to be dismissed, as the plaintiff has no right to ask for any decree to protect the right of proprietor of a trade mark.
4. Under this background, the trial Court took up the matter for trial by framing the following eleven issues:-
(i)Whether the Court has got jurisdiction to hear the suit?
(ii)When the defendant has been using the plaintiff's place of address with mala fide intention?
(iii)Whether it is proper for the defendant to say that the plaintiff has no logo?
(iv)Whether there has been any loss of profit, loss of reputation and goodwill to the plaintiff by allowing the defendant to carry on the business in the name of Iruttukadai halwa?
(v)Whether the plaintiff has got the right of proprietorship to carry on the business in her address?
(vi)Whether the plaintiff is entitled to the decree of declaration in the name of trade mark?
(vii)Whether the plaintiff is entitled to permanent injunction?
(viii)Whether the plaintiff is entitled to ask for rendition of accounts from 22.6.2007, as the defendant has been carrying on the business in the name of the plaintiff's trade mark?
(ix)Whether the plaintiff is entitled to have any order for destroying all the items namely, the bags carrying the name and logo identical to the plaintiff's trade mark?
(x)Whether the defendant has got any right to sell the halwa in question in the same name of the plaintiff's trade mark?
(xi)To what reliefs the plaintiff is entitled to?
5. When the plaintiff has examined two witnesses and marked 27 documents to support her case, the defendant has examined three witnesses and marked seven documents in support of his case. Finally, the trial Court taking note of the fact that the plaintiff's family has started the business in the year 1900 by selling the only item of halwa in Iruttukadai shop from 5.00 p.m., or 5.30 p.m., till 10.30 p.m., or 11.00 p.m., and the same could be seen from Ex.P21, Telephone directory and the said fact having been supported by an article published in the Ananda Viketan, a weekly Tamil magazine dated 14.9.2003, Ex.P22 and further taking note of the fact that even in a Tamil cinema song the name of the plaintiff's Iruttukadai halwa also found a place, concluded that the plaintiff is the prior user of the word Iruttukadai halwa. When the trial Court has come to the conclusion that the plaintiff has established that she is the prior user of the trade mark 'Iruttukadai halwa', she is entitled to the decree for declaration and injunction against the defendant. However, the relief for rendition of accounts by the defendant was refused. Aggrieved by the same, the defendant has brought the first appeal. Aggrieved by the refusal of the relief of rendition of accounts, the plaintiff has brought the cross objection.
6. The learned counsel for the appellant/defendant submitted that the trial Court has committed a serious error in decreeing the suit for declaration and permanent injunction, when the trial Court has declined the other reliefs sought for by the plaintiff, particularly the relief of rendition of accounts in favour of the defendant, it goes to show that the plaintiff has not made out her case to the satisfaction of the trial Court. While so, the suit filed by the respondent/plaintiff ought not to have been decreed. The reason being that for the last 40 years, the defendant has been using the name Tirunelveli Iruttukadai Halwa. Therefore, the general public, knowing pretty well that the word Tirunelveli Iruttukadai Halwa has been belonging to the defendant, started purchasing the items from the defendant's shop. Therefore, the finding given by the trial Court that the general public, if allowed to purchase Iruttukadai halwa from the defendant's shop, would be deceived, cannot be sustained. The trial Court ought to have seen that the Tirunelveli town is well known for halwa production for the reason that any halwa produced by any trader will give a sweet taste in view of the usage of Tamirabarani river water. Ignoring for a minute that the Tamirabarani water is responsible for giving the sweet taste, the trial Court has reached a wrong conclusion that the halwa produced by the plaintiff alone has got a peculiar taste, particularly when there is no scientific evidence adduced from the plaintiff's side showing a particular formula for producing such taste. Further, it was submitted that the trial Court has failed to apply the principles governing the use of the trade name, for the reason that the defendant had been selling the sweet with other savouries for the last 40 years and they had also got their trade mark registered and when the trade mark certificate dated 9.4.2008 issued by the Registrar under the Trade Marks Act has also spoken clearly the case of the defendant, the trial Court ought to have dismissed the case of the plaintiff on the ground that the defendant is also the current user of the trade mark. When the plaintiff's shop even now does not have a name board and she has been running the business from 5.30 p.m., till 10.30 p.m., or 11.00 p.m., by selling the only item of halwa, the running of the defendant's shop in a place far away from the plaintiff's shop, will not in any manner cause any deception. Therefore, when the plaintiff could not be put to any kind of loss, decreeing the suit in favour of the plaintiff is unfair and unjust.
7. On the other hand, the learned counsel for the respondent/plaintiff submitted that when the plaintiff, after filing the suit for declaration and permanent injunction against the defendant, has established her case that since 1900 the plaintiff's family has been carrying on the business in the name of Iruttukadai halwa and the same has been accepted by specifically calling the halwa sold by the plaintiff's shop as "Iruttukadai halwa" by not only the consumers living in Tirunelveli, but also by the consumers living in other parts of India and outside and this could be seen from the address given in the telephone directory, Ex.P21 issued by the telephone department on 31.8.99, followed by an article published in Ananda Viketan, a weekly Tamil magazine dated 14.9.2003, Ex.P22 describing the high quality and the trade mark Iruttukadai halwa sold by the plaintiff, the findings and conclusions reached by the Court below is perfrectly in order, hence, the same does not call for interference, carries more merit, for, this name has been further acknowledged in a Tamil song from the movie "Samy" as follows:-
"jpUbey;ntyp my;thlh jpUr;rp kiyf;nfhl;llh jpUg;gjpf;nf yl;L je;jh rhkplh ,Ul;Lf;fl my;thlh ,l;ypf;fl Mahlh"
When the above Tamil cinema song being repeatedly played in the State of Tamil Nadu has also spoken more about the trade mark 'Iruttukadai halwa', it goes without saying that the plaintiff's trade mark name 'Iruttukadai halwa' has become a household name in the nook and corner of this State, therefore, no one can claim as his own the name 'Iruttukadai halwa' except the plaintiff. AS a matter of fact, once the prior registration of the trade mark Tirunelveli Iruttukadai Halwa registered on 17.8.2007 clearly goes to show that the plaintiff is the prior user and has registered the trade mark, it is established and proved by the plaintiff that she is using the trade mark Iruttukadai halwa, hence, the subsequent registration of the very same trade mark by the defendant on 9.4.2008 cannot give any right or licence to the defendant to confuse the public that the defendant is also entitled to use the trade mark Iruttukadai halwa to sell the items to the public.
8. Besides, Under Section 34 of the Trade Marks Act, 1999, the vital right of the prior user of the trade mark has been well recognised. Even a registered trade mark holder like the defendant cannot lawfully interfere with or restrain the use of the trade mark by the prior user, for, the law is well settled that even a registration by the recent user cannot be a ground to reject the plea of the prior user that he/she is the prior user of the trade mark. Admittedly, in the present case, when the plaintiff has specifically pleaded in the plaint filed before the trial Court stating that the plaintiff's father in law Mr.R.Krishna Singh started the business of selling the halwa in or about 1900 at East Car Street, Tirunelveli Town in the name of Iruttukadai halwa, after his demise, the plaintiff's husband Mr.K.Bijili Singh also successfully carried on the business till his death in the year 2000. After his death, the plaintiff has been carrying on the business by producing only one item of halwa in her shop Iruttukadai by replacing the oil lamp with a 40W bulb due to the passage of time between 5.30 p.m., and 11.00 p.m. From the year 1900 onwards till now, the plaintiff's family has been running the shop only for limited hours without selling any other item except halwa and the public not only in Tirunelveli but also in other parts of India has accepted the name as Iruttukadai halwa. As highlighted above, this could be seen from the telephone directory, Ex.P21 issued in the year 1999, wherein the plaintiff's Iruttukadai halwa shop has been mentioned with the address at No.14, East Car Street, Tirunelveli Town. Moreover, another interesting article published in Ananda Viketan, a weekly magazine dated 14.9.2003 in the State of Tamil Nadu clearly brings home the case of the plaintiff for the grant of declaration and injunction against the defendant on the ground that the word 'Iruttukadai halwa' means and indicates only the halwa sold at Door No.14, East Car Street, Tirunelveli Town belonging to the plaintiff alone. Moreover, the plaintiff has also registered the trade mark 'Iruttukadai halwa' under Section 25(2) of the Trade Marks Act, 1999 with the Registrar. Under clause 16 even the paper and paper articles etc., and the trade mark's certificate issued and registered under clause 30 also clearly proves the case of the plaintiff that she is the prior user of the trade mark 'Iruttukadai halwa'. Therefore, the trial Court accepting the case of the plaintiff that she has officially registered the trade mark as a prior user rightly granted the decree for declaration and injunction against the defendant. When the plaintiff has proved that the person who gets into the business at the first point of time acquired the right to use the trade mark, the priority in use of the trade mark by the plaintiff will have to be recognised in law. Accordingly, when the plaintiff has earned the reputation and goodwill in the business in the name and style of 'Iruttukadai halwa', the defendant cannot simply add the word 'Tirunelveli Iruttukadai Halwa', as the same has been used prior in point of time by the plaintiff. Therefore, this Court is of the considered opinion that allowing the defendant to use the trade mark 'Tirunelveli Iruttukadai Halwa' will amount to deceiving the public, hence, no one can be permitted to encroach upon the goodwill and reputation of other party, particularly when a specific mark, though may be a descriptive word, has acquired a subsidiary meaning and is fully admitted by the particular company and when a party who cannot be termed as a honest current user of the mark on the reputation and goodwill of the company, it will constitute invasion of the proprietary right vested with the company and the same therefore cannot be permitted. This is for the simple reason that when a party wants to ride on the reputation and goodwill of the company, it will constitute invasion of the proprietary right, hence, the same cannot be permitted any longer. In a situation like this, it is the bounden duty and obligation of the Court not only to protect the goodwill and reputation of the prior user, but also to protect the interest of the consumers.
9. When a similar issue came up for consideration before the Apex Court in the case of T.V.Venugopal v. Ushodaya Enterprises Ltd., and another, (2011) 2 MLJ 849 (SC), the Apex Court, in paragraph-102, has held as follows:-
"102. On consideration of the totality of facts and circumstances of the case, we clearly arrive at the following findings and conclusions:
(a) The respondent company's mark `Eenadu' has acquired extraordinary reputation and goodwill in the State of Andhra Pradesh. The respondent company's products and services are correlated, identified and associated with the word `Eenadu' in the entire State of Andhra Pradesh. `Eenadu' means literally the products or services provided by the respondent company in the State of Andhra Pradesh. In this background the appellant cannot be referred or termed as an honest concurrent user of the mark `Eenadu';
(b) The adoption of the words `Eenadu' is ex facie fraudulent and mala fide from the very inception. By adopting the mark `Eenadu' in the State of Andhra Pradesh, the appellant clearly wanted to ride on the reputation and goodwill of the respondent company;
(c) Permitting the appellant to carry on his business would in fact be putting a seal of approval of the court on the dishonest, illegal and clandestine conduct of the appellant;
(d) Permitting the appellant to sell his product with the mark `Eenadu' in the State of Andhra Pradesh would definitely create confusion in the minds of the consumers because the appellant is selling Agarbathies marked `Eenadu' as to be designed or calculated to lead purchasers to believe that its product Agarbathies are in fact the products of the respondent company. In other words, the appellant wants to ride on the reputation and goodwill of the respondent company. In such a situation, it is the bounden duty and obligation of the court not only to protect the goodwill and reputation of the respondent company but also to protect the interest of the consumers;
(e) Permitting the appellant to sell its product in the State of Andhra Pradesh would amount to encouraging the appellant to practise fraud on the consumers;
(f) Permitting the appellant to carry on his business in the name of `Eenadu' in the State of Andhra Pradesh would lead to eroding extra-ordinary reputation and goodwill acquired by the respondent company over a passage of time;
(g) Appellant's deliberate misrepresentation has the potentiality of creating serious confusion and deception for the public at large and the consumers have to be saved from such fraudulent and deceitful conduct of the appellant.
(h) Permitting the appellant to sell his product with the mark `Eenadu' would be encroaching on the reputation and goodwill of the respondent company and this would constitute invasion of proprietary rights vested with the respondent company.
(i) Honesty and fair play ought to be the basis of the policies in the world of trade and business."
10. Once again, while considering a similar and identical issue, in the case of Thalappakattu Biriyani and Fast Food temorarily called as Chennai Rawther Thalappakattu Biriyani rep.by its partner, Chennai v. M/s Thalappakatti Naidu Ananda Vilas Biriyani Hotel rep.by its partner, Dindigul and others, 2011- 4-L.W.193, Hon'ble Division Bench of this Court, after dealing with the issue of infringement of trade mark by a later user, finally held that the defendant's use of the essential feature of the mark "Thalappakkatti" is a clear case of infringement. The relevant paragraph of the judgment reads as under:-
"56. Essential features of two marks are to be considered - It is well settled that in order to come to the conclusion whether one mark is deceptively similar to another the broad and essential features of two marks are to be considered. They should not be placed side by side to find out 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. Essential feature of the plaintiff's mark is "Thalappakatti" which according to plaintiff that his grandfather who was famous for his Biriyani was also well known for the turban (Thalappa) he tied around his head. Further according to plaintiff the uniqueness of this dish is its time tested recipe which uses the best of spices, meat and a special variety of rice. Defendant's mark "Chennai Rawther Thalappakattu Biriyani" is deceptively similar as that of plaintiff."
In view of the above reason, finding fault with the defendant therein using the plaintiff's trade mark deceptively similar as that of the plaintiff, the Division Bench directed the removal of the name 'Thalappakkattu" holding that allowing the defendant to continue his trade with the infringed mark of "Thalappakattu" would cause irreparable injury to the plaintiff.
11. Yet another similar issue came up for consideration before another Division Bench of this Court in the case of SNJ Distilleries Ltd., rep. by its Director, Chennai and another v. M/s Imperial Spirits Private Ltd., Maniakaranchalla, Kerala, 2010-4-L.W.304. The Hon'ble Division Bench after finding that one party using the word 'Imperial Gold Napolean Brandy' is going to confuse with another similar trade mark 'Brihans Gold Napolean Brandy', finding that the word 'Napolean Brandy' indicates the descriptive name and the word 'Brihan's' indicates another company's name, it was held that one party cannot adopt the word 'Gold' for the Napolean brandy. The reason being that a person who visits an ordinary liquor shop may not be able to distinguish the product of one company from the product of another company and the common man might be under the impression that one and the same company is selling the brandy in different bottles of various sizes with different colourful labels, making it clear that the difference in the shape of bottles or colour is not relevant in this case, since no one advertise these class of products, so the product gains popularity only by word of mouth. The common man would simply ask for gold napolean brandy and in such an event, the latter entrant viz., Brihans napolean brandy will clearly be riding on the reputation of the prior user. Finally, on that basis, this Court in the aforesaid judgment has injuncted the latter user not to use the word 'Gold' before the word 'Napolean' on the principle that in a passing-off action, what is to be seen is the similarity not the dissimilarity between the competing marks to determine whether there is deception or likelihood of causing confusion. Therefore, even in the matter of liquor, when this Court has leaned in favour of the prior user against the latter user, the above judgment will apply to the case of the plaintiff as well.
12. Similarly, in the present case also, as I highlighted above, when the trade mark certificate issued by the Registrar under Section 25(2) of the Trade Marks Act, 1999 read with the article published in Ananda Viketan weekly magazine dated 14.9.2003, Ex.P22 and the telephone directory, Ex.P21 issued in the year 1999 confirms the fact that the plaintiff is the first user of the Trade Mark 'Iruttukadai Halwa' since 1900, indisputably, the registration of Trade Mark gives statutory right and title to the mark, hence, it can be safely held that when the plaintiff has established his case, saying that he is the prior user of the mark and when the defendant's mark is found to be deceptively similar as that of the plaintiff, namely, Thirunelveli Iruttukadai Halwa, this Court, placing into the scales the relevant items i.e. prima facie case, irreparable loss and comparative hardship, hereby holds that the plaintiff is entitled for the relief of injunction, by restraining the defendant, for, he has no right to ride on the reputation and goodwill earned by the plaintiff. Therefore, in my considered opinion, the reasoning given by the learned trial Court, being absolutely in order, deserves to be affirmed. Accordingly, the first appeal filed by the defendant should fail, hence, I dismiss the same. For the very same reasons, the cross objection filed by the plaintiff is also dismissed. Consequently, M.P.(MD) No.1 of 2011 is also dismissed. No costs.
ss To The Additional District and Sessions Judge Fast Track Court No.I Tirunelveli