Madras High Court
Texmo Industries vs Mr.Roshan Kumar on 27 July, 2018
Author: C.V.Karthikeyan
Bench: C.V.Karthikeyan
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 27.07.2018
CORAM:
THE HON'BLE JUSTICE C.V.KARTHIKEYAN
C.S. No. 357 of 2017
A. No. 3874 of 2018
1. Texmo Industries,
Registered Partnership firm,
Represented by its Constituted Attorney
Mr.Palaniappan,
P.B. No.5303,
Gnanmbika Mills P.O.,
Mettupalayam Road,
Coimbatore 641 029. .. Plaintiff
Vs
1 Mr.Roshan Kumar,
Avenue Road, Robertsonpet
KGF 563122, Kolar District,
Karnataka.
2 Mr.Roshan Kumar,
Trading as G.R.Electricals
Avenue Road, Robertsonpet
KGF 563122, Kolar District,
Karnataka.
3 Mr.Roshan Kumar,
Trading as G.R.Cassetteronics
Avenue Road, Robertsonpet
KGF 563122, Kolar District,
Karnataka. .. Defendants
For Plaintiff : Mr.K.Premchandar
For Defendants : ---
PRAYER : Plaint has been filed Under Order-VII Rule 1 CPC read with Order IV Rule 1 of the Original Side Rules of the Madras High Court and Sections 11, 27, 29, 134, 135 Trade Marks Act, 1999 and under Section 55 & 62 Copyright Act, 1957. (A) A permanent injunction restraining the Defendants, their partners, their employees, officers, servants, agents and all others acting for and on their behalf from manufacturing, selling, distributing, advertising, exporting, offering for sale, launching and in any other manner, directly or indirectly, dealing in any product or services in the name of TEXMEN, TEXMEN PUMPS
or any other similar mark amounting to an infringement of the Plaintiffs registered Trade Marks Nos.315049 and 315050, both in Class 07; (B) A permanent injunction restraining the Defendants, their partners, their officers, employees, servants and agents, from manufacturing, selling, distributing, advertising, exporting, offering for sale, launching and in any other manner, directly or indirectly, dealing in any product or services under the Trade Mark TEXMEN, TEXMEN PUMPS or any
other similar marks amounting to passing off of the products and services of the Defendants as and for that of the Plaintiff's mark TEXMO; (C) A permanent injunction restraining the Defendants, their partners, their employees, officers, servants, agents and all other acting for and on their behalf from manufacturing, selling, distributing, advertising, exporting, offering for sale, launching and in any other manner, directly or indirectly, dealing in any product or services using
or any other similar mark amounting to an infringement of the Plaintiff's copyright in
(D) To declare the Plaintiff's Trade Mark TEXMO as a well-known Trade Mark; (E) To grant order of delivery up of any brochures / printed material and / or any material which infringes Plaintiffs' copyright and registered Trade Marks TEXMO; (F) To direct the defendants for rendition of accounts in respect of their alleged activities especially sale and promotion of products bearing the mark TEXMEN for their goods and business.
J U D G M E N T
A.No.3874 of 2018 in C.S.No.357 of 2017, has been filed by the plaintiff in the suit taking advantage of Order 13-A of the Code of Civil Procedure as amended owing to the introduction of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015.
2. The said Act namely the Commercial Courts, Commercial Division and Commercial Appellate Division of the High Courts Act 2015 (4 of 2016) had been introduced by the Parliament to provide for Constitution of Commercial Division in High Courts for adjudicating commercial disputes of specified value and for matters connected or incidental there in to. This Act received the assent of the president on 31.12.2015. Under the said Act, while expanding the term commercial dispute under Section 2(1)(c), under Sub Section (xvii), intellectual property rights relating to registered and unregistered Trade Marks, Copyright, Patent, Design, Domain names, Geographical indications and semi-conductor integrated circuits have also been included.
3. In the said Act, Order 13-A had also been inserted as an amendment to the Code of Civil Procedure. This order relates to summary judgment. Under this order, either the plaintiff or the defendant may apply for summary judgment on the ground that the other party does not have any real prospect of succeeding on the claim and further on the ground that the relief can be granted without recording oral evidence. With that as the basis, the plaintiff in the present suit had filed the present application seeking a summary judgment against the defendant.
4. The suit in C.S.No.357 of 2017 had been instituted before this court. Even before it was admitted, leave to sue was granted under Class 12 of the Letters Patent by Order dated 24.04.2017 in Application No.2507 of 2017. This fact is stated since the issue of jurisdiction was canvassed during the course of advancement of arguments by Mr.K.Premchandar, who argued the matter on behalf of the plaintiff.
5. The suit had been instituted under Sections 11, 27, 29, 134, 135 of the Trade Marks Act 1999 and under Sections 55 and 62 of the Copyright Act 1957 read with the relevant rules of the Original Side of the High Court Madras and the Code of Civil Procedure. The plaintiff is TEXMO INDUSTRIES, which is a registered partnership firm and it is represented in the suit by its constituted Attorney Mr.SM.Palaniappan. The defendants are Roshan Kumar, who is said to have three different addresses. He is shown as a defendant with the three addresses. The defendant No.1 is Roshan Kumar, Avenue Road, Robertsonpet KGF 563122, Kolar District, Karnataka. The defendant No.2 is Roshan Kumar, Trading as G.R.Electricals Avenue Road, Robertsonpet KGF 563122, Kolar District, Karnataka. The defendant No.3 is Roshan Kumar, G.R.Cassetteronics Avenue Road, Robertsonpet KGF 563122, Kolar District, Karnataka.
6. The plaintiff had sought protection from this court with respect to their registered Trade Mark TEXMO, which they claim had been infringed by the defendants who also manufacture a similar kind of goods under the name TEXMEN, TEXMEN PUMPS, which are claimed to be deceptively similar to the plaintiffs registered Trade Marks. In the plaint, it had been stated that the plaintiff had commenced business in the year 1956 under the trading style of TEXMO INDUSTRIES.
7. The learned Counsel highlighted the origin of the word TEXMO. According to the learned Counsel, the Managing Partner of the plaintiff originally started manufacturing accessories with respect to the Textile Industry. He later acquired the technology to manufacture Motor Pump Sets. He then coined his Trade name TEXMO using the first three letters from the word TEXTILES and the last two letters from the word MOTOR. It is therefore urged by Mr.K.Premchandar that the plaintiff's mark is unique and it has been coined specifically by the plaintiff. There cannot be any infringement or usage of such a word or even combination of such a word, since, anybody who attempts to infringe the word could not know the origin of the word. In the plaint the plaintiff had stated that they have the registration of the Trade Mark TEXMO in its various forms for device and also for the design and the details are given as follows:-
S. No. Trade Mark Filed in the year TM. No. & class Status
1.
TEXMO 1998 794425 in class 2 Registered
2. TEXMO 1976 315049 in class 7 Registered
3. TEXMO (device) 1976 315050 in class 7 Registered
4. 1998 794426 in class 11 Registered
5. TEXMO 1998 794451 in class 11 Registered
6. TEXMO 1998 794432 in class 22 Registered
7. TEXMO 1998 794436 in class 23 Registered
8. TEXMO 1998 794464 in class 23 Registered
9. 1998 794434 in class 24 Registered
10. 1998 794465 in class 25 Registered
11. TEXMO 1998 794417 in class 25 Registered
12. TEXMO 1998 794418 in class 26 Registered
8. The plaintiff also has a logo to go along with his mark TEXMO. The said logo is primarily an inverted triangle red in colour. The said artistic logo of the plaintiff is also given below:-
Artistic Logo of the Plaintiff
9. The plaintiff's goods bearing the mark TEXMO INDUSTRIES, TEXMO and the logo TEXMO had been advertised widely. The plaintiff also claims that they have business interest across the length and breadth of the country. These motors are primarily used for agricultural purposes. They have also been registered as Motors under the said classes. There have been many occasions when various entities have attempted to infringe on the plaintiffs Trade Mark and the plaintiff had occasion to institute suits before this court to protect the Trade Mark. The courts have also granted such protection. In the plaint it had been further stated that the defendants have adopted a mark TEXMEN which is as follows:-
10. This has caused much grievance to the plaintiff because the word TEXMEN is quite similar to the word TEXMO. It has been emphasised by the learned Counsel that the plaintiff's mark conveys a meaning to the plaintiff, in view of its origin. It is clear that the defendant has copied the name of the plaintiff and I hold the letters MEN would not in any way make it a distinct mark than that of the plaintiff. It is also seen that the defendants have also a logo of the inverted triangle. The defendants are also in the same class of business namely manufacturing Submersible Pump Sets and Electric Motors and such other machines and they also have the image of the farmer. It is to be pointed out that the Motor Sets of the plaintiffs are primarily used in the agricultural field. It is therefore clear that the defendants are attempting to ride on the reputation of the plaintiff. If that is permitted the plaintiffs loss would far outweigh the difficulties of the defendants. They can always change their mark, name and device.
11. This adoption of the mark by the defendants came to the knowledge of the plaintiff on October 2016, owing to an Application in Application No.2242658 in Class 7 filed in the name of the defendants for registration of the mark. It must be pointed out that the plaintiff has a registration in No.315050 for class 7 which had been registered in the year 1976 under the mark TEXMO(Device). There is also another registration in class 7 in registration No.315049 also in the year 1976 for the Trade Mark TEXMO by the plaintiff. In view of the registrations obtained by the plaintiff, the application of the defendants was a cause for institution of the suit.
12. The learned Counsel for the plaintiff relied on Section 29(3) of the Trade Marks Act, wherein, it is been provided that the court shall presume that in cases falling under Sub Section (c) of Section 2, which relates to identity of the registered Trade Mark that it would cause confusion on the part of the public.
13. This Court had also granted an interim injunction in favour of the plaintiff. The plaintiff then took advantage of Order 13-A of the Code of Civil Procedure as amended and filed the present application seeking summary judgment against the defendant. Notice was directed to the defendants even in the application. The notices sent were returned as refused. Clearly the defendants have no intention of participating in the judicial proceedings. Rather it can also be stated that they only have contempt for the judicial proceedings. They have decided consciously to stay away from the judicial proceedings. In view of such an attitude this court has no other option but to proceed with the matter ex-parte.
14. While examining the claims of the plaintiff for protection it is seen that the plaintiff has a registration of the Trade Mark TEXMO and more particularly also for the artistic logo, which is an inverted triangle with the words TEXMO inscripted. The application made by the defendant is also of a logo with an inverted triangle but with the words TEXMEN and with a farmer as a picture. The picture of the farmer also offends the plaintiff because the business of the plaintiff is primarily in the agriculture field, namely, supplying motors for use in the agricultural process.
15. It is also stated by the learned Counsel for the plaintiff that subsequently the defendants appear to have abanded their application filed for registration of the name TEXMEN. The plaintiff therefore claims that a judgment should be passed for protecting his registered Trade Mark, Copyright and also preventing the defendants from passing off their products as if they are the products of the plaintiff by using the offending mark TEXMEN. It is pertinent to point out that the defendants are also in the same line of business namely providing motors for agricultural purposes. It is therefore clear that the plaintiff has made out a prima facie case. The conditions required under Order 13-A are that the plaintiff must have made out a case for passing a judgment in the suit and also that such judgment can be passed without taking recourse to oral evidence.
16. In the present case the documents filed by the plaintiff along with the plaint clearly establish registration of the mark. They also establish the fact that the plaintiff has been using the mark to their advantage for a long period of time as on date. It is also brought to the notice of this court that in earlier suits, the plaintiff has had the benefit of favourable consideration by this court and I see no reason to differ from such opinion.
17. Consequently, Application No.3874 of 2018 is allowed and a summary judgment is passed in favour of the plaintiff in terms of the relief sought in the plaint except relief (D).
18. In relief (D), the plaintiff has also sought a declaration to be passed that the plaintiff's Trade Mark TEXMO is a well known Trade Mark.
19. The learned Counsel for the plaintiff has relied on an earlier judgment dated 11.12.2017 of this court in C.S. No.50 of 2017 in which the present plaintiff was also the plaintiff. In that case also the present mark TEXMO was under consideration of this court.
20. The court had granted a declaration that the mark is a well known Trade Mark. I had the occasion to peruse the judgments with much respects to the learned Judge, I am not able to subscribe to the view that the court can pass a declaratory order, declaring a mark as a well known Trade Mark. In this connection, it would be advantage as if we examine Section 11 of the Trade Marks Act, more particularly Sections 11(6), 11(7), 11(8) & 11(9) which are as follows:-
11(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including
(i) the knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record.
11(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
11(8) Where a trade mark has been determined to be well-known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
11(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark
(a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India. Section 11(6) deals with the power of the Registrar to determine a Trade Mark is the well known Trade Mark and the considerations he has to take into consideration.
Section 11(7) also gives the determining factors for a Registrar.
Section 11(8) further states that where it had been determined to be a well known Trade Mark in atleast one relevant Section public in India, then the Registrar shall consider that Trade Mark is a well known Trade Mark.
21. From a careful reading of the above provisions, it follows that this court can only determine that a mark is a well known mark with atleast one relevant section of the public. In the present case the plaintiff manufactures Motor Pumps used for agricultural purposes under the name TEXMO. They have been in the business for a considerable period of time. In the agricultural sector if any member of that group wants to purchase motors, this court can reasonably presume say that the plaintiffs mark TEXMO would be recalled uppermost in their minds. If substantial number of persons in the agricultural field opt for the plaintiff's mark TEXMO, or rather, as their first choice, purchase the plaintiff's motor TEXMO or even if they relate Motor Pumps used for agricultural purposes only to plaintiff's products under the mark TEXMO then certainly a determination can be given that the plaintiff's mark is a well known to that particular section of the public. But the issue whether the court can declare that the mark is a well known mark or not is the mute issue to be determined.
22. As mentioned by me, the learned Counsel for the plaintiff relied on an earlier judgment of this court with respect to the very same mark TEXMO, wherein, Honble Dr.Justice ANITA SUMANTH in C.S.No.50 of 2017 and OA.Nos.71 to 73 of 2017 by judgment dated 11.12.2017 had declared that the plaintiff satisfies the requirements and tests of a well known mark and is entitled to be categorized as such in terms of Section 2(1) (zg) of the Trade Marks Act, 1999 and had declared that the mark is a well known mark. The learned Judge had relied on another judgment of the Delhi High Court in Tata Sons Ltd. V. Manoj Dodia and Ors. reported in 28 March, 2011 ((46) PTC 244 (Del)), in which the Delhi High Court had held as follows:-
'... In determining whether a Trade Mark is a well known mark or not, the Court needs to consider a number of factors including (i) the extent of knowledge of the mark to, and its recognition by the relevant public; (ii) the duration of the use of the mark; (iii) the extent of the products and services in relation to which the mark is being used; (iv) the method, frequency, extent and duration of advertising and promotion of the mark; (v) the geographical extent of the trading area in which the mark is used; (vi) the state of registration of the mark; (vii) the volume of business of the goods or services sold under that mark; (viii) the nature and extent of the use of same or similar mark have been successfully enforced, particularly before the Courts of law and Trade Mark registry and (x) actual or potential number of persons consuming goods or availing services being sold under that brand....'
23. The learned Judge had also observed that the said judgment had been applied by a Co-ordinate Bench of the Delhi High Court in yet another case in World Wrestling Entertainment Inc Vs. Reshma Collection and Ors ((2017) PTC 550).
24. However, I am not able to convince myself to accept the reasoning given. Any court can never give a complete answer to the factors including:
1. the extent of knowledge of the mark to, and its recognition by the relevant public;
2. the duration of the use of the mark;
3. the extent of the products and services in relation to which the mark is being used;
4. the method, frequency, extent and duration of advertising and promotion of the mark;
5. the geographical extent of the trading area in which the mark is used;
6. the state of registration of the mark;
7. the volume of business of the goods or services sold under that mark;
8. the nature and extent of the use of same or similar mark have been successfully enforced, particularly before the Courts of law and Trade Mark registry and
10. actual or potential number of persons consuming goods or availing services being sold under that brand.
Enumerated by the Delhi High Court in (46) PTC 244 (Del) (Supra). They are factors which can be determined only by the Registrar of Trade Marks. In my opinion, the Court is not an expert on those lines and the court cannot substitute itself for the Registrar of Trade Marks who is the competent authority to examine the relevant statistics to declare that a mark is a well known mark.
25. The Registrar of Trade Marks would have the benefit of taking into consideration the relevant factors namely the knowledge or recognition of that Trade Mark in the relevant sector of the Public, the duration, the extent and the geographical area of any use of that Trade Mark and including advertising, publicizing and presentation an exhibition of the goods and such other factors are as enumerated in Section 11(6) and also under Section 11(7) the actual number of our potential consumers of the goods and the number of persons involved in the distribution of the goods and the business circles dealing with the goods to which the mark applies. When these conditions are satisfied then in my opinion, the court can only determine that the mark is a well known in that particular section of public and it is for the Registrar to consider that finding regarding the Trade Mark and then decide to declare that the mark is a well known Trade Mark for registration under the act.
26. In this connection, Section 2(y) of the Act defines the Registrar as a Registrar of Trade Marks referred to in Section 3 and the powers of the Registrar are given under Section 4. He should maintain the Register of Trade Marks under Section 6 of the Act. These are the Registers which would give the details as to the actual date of registration and the entire listing of the mark. The Registrar also has to publish in an alphabetical index of the classification of goods and services. He also has the power to refuse registration. The Registrar also has the power to prohibit registration of names of chemical elements or international non proprietary terms.
27. The effects of registration of mark is given in Section 17 of the Act. The procedure for registration has been given under Section 18 of the Act and the manner in which it is processed is also given. Section 23 deals with the actual registration of the mark. The Registrar having been conferred with all these powers, I must be pardoned to entertain a doubt whether the court can substitute itself for the Registrar and give a declaration that a mark is a well known mark or not. Propriety demands that since there is been earlier judgment of this court on this one issue namely whether the court can declare a mark as a well known mark or the court can only determine the factors relating to the mark as a well known mark and the onus is on the Registrar of trade marks to declare such mark as a well known mark I hold is a matter to be referred to a Larger Bench.
28. In this connection Rule 124 of the Trade Mark Rules 2017, can also be referred with advantage. In view of the above, the suit is decreed as prayed for except for the relief (D) namely, to declare the plaintiffs Trade Mark TEXMO as a well-known Trade Mark and on that issue the matter is to be placed before my Lord the Hon'ble The Chief Justice, for constituting a Division Bench to decide on the issue, whether the Court can declare a Trademark as a well-known Trademark or whether the Court can only determine the factors present to declare a Trademark as a well-known Trademark and thereafter it is the prerogative of the Registrar of Trademark to actually declare a Trademark as a well-known Trademark in view of the fact that I differ from the judgment of Justice Anitha Sumanth passed in C.S.No.50 of 2017, dated 11.12.2017, wherein, the learned Judge had granted a declaration of a trademark as a well-known trademark.
29. In the result, the suit is decreed with costs except with respect to Relief(D), which is placed before My Lord, the Honourable Chief Justice, of constituting a Division Bench.
27.07.2018 Speaking Order/Non Speaking Order Index: Yes / No Internet: Yes/No msvm C.S. No. 357 of 2017 A. No. 3874 of 2018