Madras High Court
S.V.S. Oil Mills, Rep. By Its Partner, ... vs S.V.N. Agro-Refineries And S.V. ... on 28 June, 2004
Equivalent citations: (2004)3MLJ543
Author: V. Kanagaraj
Bench: V. Kanagaraj
JUDGMENT N.V. Balasubramanian, J.
1. This appeal is preferred against the order of learned Judge passed in O.A. No. 40 of 2003 in C.S. No. 19 of 2003 dated 7.10.2003 wherein the learned Judge held that the plaintiff is not entitled to temporary injunction restraining the defendants from manufacturing, marketing, selling and advertising its products by using the trademark as shown in the plaintiff's labels and pouches in its colour scheme and getup in respect of the edible oil including groundnut oil, sunflower oil, vanaspathi and palmolein.
2. The plaintiff is the appellant herein and the defendants are the respondents. The plaintiff instituted the suit in C.S. No. 19 of 2003 on the file of this Court seeking the relief of permanent injunction restraining the defendants from manufacturing and marketing, selling or advertising by using the trademark as shown in the labels/pouches in its colour scheme and get up in respect of edible oil including groundnut oil, sunflower oil, vanaspathi and palmolein of the plaintiff including the trade literature and for other incidental reliefs. The plaintiff also filed an application for the relief which we have set out earlier. Both the defendants have filed a common counter affidavit, and the learned Single Judge has considered the application and dismissed the same. Against the order of the learned Judge, the appeal has been preferred. For the sake of convenience, the parties are hereinafter referred to as arrayed in the plaint.
3. The plaintiff is a partnership firm registered under the provisions of the Partnership Act. It consists of three partners, namely, S.V. Chandrapandian, S.V. Kasilingam and S.V. Ramachandran. They are sons of one Sudalimadan Velayuthaperumal Nadar and it seems that Sudalimadan Velayuthaperumal Nadar had six sons and a daughter. The sons of Sudalimadan Velayuthaperumal Nadar, when they migrated to Chennai, carried on the business by establishing firewood business, provision stores, rotary oil mills and other shops in Chennai. Later on, all the sons and the daughter of Sudalimadan Velayuthaperumal Nadar formed a partnership firm by a deed dated 18.9.1968 in the name and style, SVS Oil Mills and the firm was registered with the Registrar of Firms on 24.3.1969 and the firm was formed to carry on the business of manufacture and sale of edible refined oil using the trademark SVS. It is the case of the plaintiff that from 1969 onwards, the firm SVS Oil Mills started manufacturing and marketing edible refined groundnut oil using the trademark SVS with inverted triangle and a distinctive colour scheme and get up of red and yellow and the same colour scheme and getup continued till the date of the suit also. It is stated that on 22.1.1973, the partners of the firm SVS Oil Mills applied for and obtained registration of the trademark SVS with the inverted triangle. In 1981, dispute arose between the partners of SVS Oil Mills and the matter was referred to arbitration. On 25.11.1982, prior to the settlement of disputes by arbitration, one of the partners, Kanthimathi ammal received her share and left the firm and a new partnership deed was executed without Kanthimathi ammal. On 9.7.1984, the arbitration award was passed allotting the assets and liabilities of the firm SVS Oil Mills to S.V. Chandrapandian, S.V. Kasilingam and S.V. Ramachandran, all partners of the plaintiff firm and S.V. Natesan, the second defendant in the suit. In the award, two other sons of Sudalimadan Velayuthaperumal Nadar, namely, S.V. Sivalinga Nadar and S.V. Harikrishnan were not allotted any share in SVS Oil Mills and pursuant to the award of the Arbitrators, on 25.7.1984 the plaintiff firm was reconstituted with four partners, by name, S.V. Chandrapandian, S.V. Kasilingam, S.V. Ramachandran and S.V. Natesan and the firm was also registered. The plaintiff firm and the second defendant filed a suit against S.V. Sivalinga Nadar in C.S. No. 1016 of 1987 for permanent injunction restraining him from using the trademark Original SVS. S.V. Sivalinga Nadar and S.V. Harikrishna Nadar challenged the arbitration award before this Court in O.P. No. 230 of 1988. The four brothers also filed an application to make the award a rule of the Court and obtain a decree in terms of the award. This Court, by order dated 17.11.1988, made the award as the rule of the Court and passed a decree in conformity with the award, and dismissed the O.P. No. 230 of 1988 filed by S.V. Sivalinga Nadar and S.V. Harikrishna Nadar challenging the award. The order was challenged in appeal by S.V. Sivalinga Nadar and S.V. Harikrishna Nadar and a Division Bench of this Court in O.S.A. Nos. 48 and 191 of 1988 by judgment dated 13.11.1991 set aside the order of learned Single judge on the ground that the award passed by the arbitrators was not registered. Against the judgment of the Division Bench of this Court, an appeal was preferred before the Supreme Court and the Supreme Court set aside the judgment of the Division Bench and remanded the matter to this Court for fresh reconsideration by the Division Bench. The Division Bench of this Court subsequently, by judgment dated 27.10.1993 confirmed the judgment passed by the learned Single Judge confirming the award. The judgment of the Division Bench was challenged before the Supreme Court and the Supreme Court upheld the award and also appointed a Valuer to determine the amounts due to the erstwhile partners to be paid by the continuing partners. It is stated that the award has become final and as per the award, the firm SVS Oil Mills was allotted to the partners of the plaintiff firm, namely, S.V. Chandrapandian, S.V. Kasilingam and S.V. Ramachandran and also S.V. Natesan, the second defendant in the suit. It is also relevant to refer to the stand taken by S.V. Sivalinga Nadar in the suit filed against him. He filed a written statement in August, 1995 stating that the proceeding with respect to the arbitration award had not reached its finality and the cause of action for the plaintiff and the second defendant to file the suit restraining him (S.V. Sivalinga Nadar) from using the trademark Original SVS would accrue only after the final disposal of the arbitration proceedings. The plaintiffs and the second defendant withdrew the suit filed against S.V. Sivalinga Nadar with liberty to file a fresh suit after the completion of the arbitration proceedings. As already stated, the Supreme Court upheld the award and appointed a Valuer to determine the monetary adjustments between the parties. In 1995, the firm SVS Oil Mills launched the sale of Vanaspathi in 15 Kilogram tins with a distinctive colour scheme and get up and in 1996, the firm SVS Oil Mills launched the sale of groundnut oil in one litre polythene pouches, palmolein in 15 kg. tins and one litre polythene pouches with a distinctive colour scheme and getup. In 1997, the plaintiff firm launched the sale of vanaspathi in one litre and " litre pouches with a distinctive colour scheme and getup and the copies of the labels are found in the list of documents filed by the plaintiff. In 1999, the plaintiff firm launched the sale of Sunflower Oil in 15 Kg. tins and one litre and litre pouches with a distinctive colour scheme and getup. On 1.4.1999 the partnership deed was executed between the partners of the plaintiff and the second defendant and the deed provides that in the event of retirement of anyone of the partners, the amounts due to the retiring partner would be determined by the Auditor of the firm. On 12.12.2000 an application for registration of the trademark VOM was filed at the instance of the second defendant and on 15.3.2001 the second defendant filed an application for registration of the trademark SVS in his favour. On 22.2.2001 the second defendant retired from the plaintiff partnership firm, SVS Oil Mills with effect from 30.11.2000 and received a sum of Rs. 77,57,248.40 (Rupees Seventy seven lakhs fifty seven thousand two hundred and forty eight and paise forty only) and the retirement deed was also executed. Subsequently, on 15.5.2001 the Registrar of Trademarks on application by the partners of the plaintiff firm removed the name of the second defendant as one of the joint proprietors of the trademark SVS. The second defendant, after retirement from the partnership firm, started the business using the trademark SVS Gold with respect to edible refined oil which forced the plaintiff to file a suit for permanent injunction against the second defendant against the use of the trademark and the trade name SVS. This Court, by order dated 27.6.2001, granted interim injunction against the second defendant restraining him from using the trademark and trade name SVS. On 11.8.2001 the plaintiff firm filed an application under section 20 of the Companies Act challenging the incorporation of the company SVS Agro Refineries Pvt. Ltd. by the second defendant as the same was similar to the plaintiff's firm name, SVS Oil Mills and the incorporation of the company SVS Agro Refineries Pvt. Ltd. was cancelled by the Regional Director of Companies. The second defendant and SVS Agro Refineries Pvt. Ltd. filed an appeal against the grant of interim injunction restraining him from using the trademark and trade name SVS in O.S.A. No. 222 of 2001 and a Division Bench of this Court on 19.4.2002 dismissed the appeal recording the undertaking made by the second defendant that he would not use the trademark or trade name SVS. The second defendant herein also surrendered the polythene pouches bearing the trademark SVS for destruction. The second defendant filed an appeal against the order of the Registrar of Trade Marks removing his name as one of the joint proprietors of the trademark SVS by filing T.M.A. No. 3 of 2001 on the file of this Court and the same was also withdrawn by him. He also challenged the order of Regional Director of Companies by filing a writ petition in W.P. No. 18332 of 2001 on the file of this Court and the writ petition was dismissed and against that, the second defendant filed a writ appeal in W.A. No. 2490 of 2001 and the same was also dismissed as withdrawn. The case of the plaintiff is that the second defendant has started marketing edible refined oil from December, 2002 with the trademark SVN adopting the colour scheme and getup as that of the plaintiff.
4. It is, in the above factual background, the case of the plaintiff has to be seen. The case of the plaintiff, as seen from the plaint, is that the colour scheme and getup and distribution of letters adopted in the labels and pouches for selling the edible oil in tin containers and pouches are used by the plaintiff extensively and the plaintiff by its extensive and substantial use of the trademark acquired tremendous reputation and goodwill apart from its name in the colour scheme and getup for its quality and reliability. The case of the plaintiff is that the exploitation of the trademark in the colour scheme and getup by others in respect of the goods, particularly in edible oil business is illegal. The plaintiff has furnished the details of promotional expenses incurred and the annual turnover for a period of twelve years commencing from 31.3.1990 to 31.3.2002. The case of the plaintiff is that in the earlier proceedings initiated against the defendants the visual similarity of the trademark was not in issue because the getup and layout of the defendants' labels prior to December, 2002 were different from the getup and layout of the plaintiff's labels and hence, no objection was raised to the getup and layout of the defendants' labels and pouches in the earlier proceedings. The plaintiff also produced a copy of the label of the defendants with the colour scheme and getup used in 15 kg. tin container of refined groundnut oil. The plaintiff also produced a copy of the label used by the plaintiff in 15 kg. tin container of refined groundnut oil to show that the colour scheme and getup of the labels used by the defendants are similar to that of the plaintiff. It is stated that the labels and pouches used for one litre refined groundnut oil marketed by the defendants show that the colour scheme and getup are similar to the one used by the plaintiff. It is also stated that when the second defendant started manufacturing and marketing his business in the year 2001, he is falsely claiming in the label that the defendants are manufacturing edible oil from 1968. The plaintiff is aggrieved by the changes introduced by the defendants in the labels for marketing edible groundnut oil and sunflower oil in 15 kg. tin container and one litre polythene pouches. It is also stated that the defendants started to imitate plastic pouch used by the plaintiff for marketing palmolein. The plaintiff referred to the plastic pouch earlier used by the defendants for marketing palmolein and also the plastic container used by the defendants from December 2002 for marketing palmolein. It is the case of the plaintiff that the defendants have adopted identical getup and colour scheme as that of the plaintiff for marketing their palmolein sold in the quantity of one litre, half litre, etc. Another allegation made by the plaintiff is with reference to the sale of sunflower oil. The plaintiff referred to the label earlier used by the defendants for sunflower oil sold in 15 kg. container and also the label later adopted and used by them for sunflower oil. The case of the plaintiff is that in respect of sunflower oil also, the defendants claimed that they have been marketing the oil since 1968 whereas the defendants started manufacturing of their products only in the year 2001 and the colour scheme and getup of the defendants in sunflower oil are similar to that of the plaintiff. The case of the plaintiff is that the defendants are exploiting the commercial goodwill attached to the colour scheme, getup and distribution of letters used in the label of the plaintiff. It is stated that if the defendants are permitted to use the same colour scheme, getup and distribution of letters in respect of edible oil, the trade and the public would think that there is connection between the plaintiff and the defendants' products even though there is no connection. It is also stated that the general public will think that the defendants are the sister concern of the plaintiff in view of the fact that the second defendant was a partner of the plaintiff firm till 2000. It is the case of the plaintiff that the defendants by the above action mislead the public and the trade and the conduct of the defendants amounts to fraud. It is stated that the defendants were adopting different getup and different colour scheme upto December, 2002, but after December, 2002, the defendants have been adopting the trademark labels in all its products similar to the plaintiff's well known label and hence, the defendants cannot claim honest adoption and use of the newly introduced labels used by them. It is also stated that the defendants also distributed calendars with the same colour scheme and getup of the plaintiff. It is stated that the changes in the colour scheme and getup of the calendar were introduced only for the purpose of passing off their edible oil and to confuse the trade and public along with other newly introduced labels similar to that of the plaintiff's. Hence, the suit has been filed for injunction against the defendants for the infringement of trademark by using the same colour scheme and getup as that of the plaintiff and for consequential reliefs. It is also stated that the plaintiff has no objection for the defendants to use some other getup and colour scheme for marketing their products.
5. As already stated, the plaintiff has filed an application for interim injunction for which a counter affidavit has been filed. The main contention of the defendants is that the products of the plaintiff are not identified on the basis of colour combination and getup and the products of the plaintiff are identified only on the basis of the trademark SVS on the inverted triangle. The case of the defendants is that in the earlier proceedings nothing was mentioned about the colour combination and getup and when the arbitration matter came up before the Supreme Court, the plaintiff contacted the second defendant and asked him to co-operate in the matter before the Supreme Court and since the second defendant insisted that certain documents should be handed over to him and he should be paid for the goodwill and to settle the amounts as promised by the partners and aggrieved by the same, the present suit has been filed with false and frivolous allegations with a view to pressurize the defendants and to avoid other obligations. The case of the defendants is that the suit is devoid of merits and the plaintiff is not entitled to injunction. It is also stated that the plaintiff has filed the suits one after another against several persons on the alleged infringement of trademark and the present suit has been filed to harass the second defendant and also to avoid other obligations. The case of the defendants is that the action of the plaintiff is not bona fide and the plaintiff is not entitled to interim injunction.
6. Learned Judge, after considering the pleadings and submissions made on behalf of the parties, framed necessary points and held that the plaintiff's products are advertised with the trademark SVS displayed on inverted triangle and it cannot be stated that the plaintiff's products are recognized only by colour scheme in the background. Learned Judge also held that the broad and essential features of the labels belonging to both the parties are different and there is no possibility of their being mistaken one for another and the prominent distinctive characteristic mark viz., SVS on inverted triangle is absent in the labels adopted by the defendants. Learned Judge held that the prominent feature 'inverted triangle' placing SVS on the triangle would not go unnoticed by the buyers even if the buyer is a housewife whatever be her mental frame. She also held that notwithstanding the similarity in colour, by their primary observation the customers would be able to identify the product by the distinctive mark of the triangle and there is no likelihood of confusion or deception and there is no prima facie case as pleaded by the plaintiff. Learned Judge also held that on seeing the defendants' goods and in the absence of triangle, there is no possibility or likelihood of confusion in the mind of the consumer public thinking that it is the product of the plaintiff. Learned Judge held that having regard to the distinctive mark, it cannot be said that the housewife with an average intelligence is likely to be misled by the colour combination and getup. Learned Judge also referred to the labels with the same colour combination used by other oil companies and came to the conclusion that the general colour scheme adopted for selling edible oil appears to be yellow and red printing and when such colour combination is generally adopted by other manufacturers, it is not open to the plaintiff to make complaint against the second defendant from using the colour scheme yellow and red merely because he is a retired partner from the plaintiff partnership concern. Learned Judge held that the second defendant has not released his right in the goodwill and his accounts were not settled towards the goodwill and the extent of his right to use the goodwill is a matter of evidence. Learned Judge held that the second defendant has the right to adopt the trade name with colour scheme and getup. Learned Judge held that the first defendant is entitled to adopt the trade name and the colour combination for which the plaintiff could have no valid objection and the plaintiff is precluded from raising any objection. Learned Judge also held that the colour scheme and getup adopted by the defendants for sunflower oil, palmolein and vanaspathi are not similar to the plaintiff's and the plaintiff has not established that its business is affected with respect to other categories of oil including vanaspathi. Learned Judge held that by printing calendars and distribution of the same, the defendants had no intention to exploit the business and goodwill of the plaintiff. Learned Judge also held that the annual turnover of the plaintiff has increased and it is not affected by the marketing of the defendants' goods. Learned Judge also proceeded on the basis that when the second defendant was one of the joint proprietors of the trade name SVS for dealing in edible oil business, the plaintiff could not prevent the second defendant from establishing any oil industry. Learned Judge came to the conclusion that the suit has been filed to pressurize the second defendant. Learned Judge also held that the adoption of colour scheme and getup by the defendants does not amount to deceptive similarity and it is a matter of evidence whether the adoption of colour scheme and get up by the defendants has caused deceptive similarity. As far as imperfect recollection is concerned, learned Judge held that though the class of purchaser a house wife or house maid may not be literate, but they would certainly have the sharp mind in purchasing the right product and would certainly go by the device inverted triangle and not by the colour combination as urged by the plaintiff. Learned Judge held that the plaintiff has not established that there is distinctive characteristic of the colour scheme and getup and the colour scheme with the printing and other features referred to by the plaintiff are quite common to the trade and the plaintiff cannot claim any proprietary interest to its label/pouches or the colour which is capable of being acquired, nor the plaintiff has established that its products are recognized only by the colour scheme. Learned Judge therefore held that the plaintiff is not entitled to the equitable relief of temporary injunction. Learned Judge also noticed the conduct of the plaintiff and held that the plaintiff is abusing the process of Court in proliferating the litigations and hence, the plaintiff should be directed to pay costs of a sum of Rs. 10,000/- to the Tamil Nadu Legal Services Authority. In this view of the matter, learned Single Judge dismissed the application. It is, against the order of the learned Single Judge, the present appeal has been preferred.
7. Mr. N.A.K. Sharma, learned counsel for the appellant/plaintiff submitted that the second respondent after failed in his earlier attempt to use the trade name SVS for his products and on the formation of the company, SVS Agro Refineries (P) Ltd., is now gravitating towards the colour combination and get up of the appellant in a fraudulent and dishonest manner and there is no explanation for the change in the colour combination and get up of the labels used by the defendants which are deceptively similar to that of the plaintiff. Learned counsel submitted that the plaintiff has established reputation and goodwill in the use of the trademark SVS and the second defendant has deliberately adopted the colour scheme and get up of the plaintiff's label and only the difference is that the trademark SVN is enclosed in a circle whereas the plaintiff's trademark SVS is on the inverted triangle and the intention of the second defendant is to pass off his goods as that of the plaintiff and to deceive and cause confusion in the minds of the public. Learned counsel submitted that the plaintiff's edible oil is marketed by the labels having distinctive colour scheme and getup and the defendants, by adopting the labels which are identical and deceptively similar to that of the plaintiff for marketing the edible oil through same outlets, resorted to the practice of deception causing confusion in the minds of the public. Learned counsel submitted that the second defendant, who was one of the partners of the plaintiff firm, is aware of the enormous goodwill and reputation of the plaintiff business and hence, adopted the colour scheme and getup of the plaintiff to market his goods as that of the plaintiff. Learned counsel submitted that the view of the learned Judge that the plaintiff's edible oil is marketed and known in the market as SVS brand or as 'Mukkonam' (inverted triangle) and the similarity in colour scheme and getup would not lead to confusion is not correct. Learned counsel submitted that the trademark SVS on the inverted triangle is only a part of the label and the colour scheme and get up are also relevant to show the origin of the goods because of the vast and long user by a reputed edible oil marketer, the plaintiff. Learned counsel submitted that the second defendant has fraudulently tried to cash on the goodwill and reputation of the plaintiff by adopting similar colour scheme and get up as that of the plaintiff. Learned counsel relied on certain decisions to emphasize that not only the brand name, but also a particular colour scheme and get up of label and package are relevant. As far as the claim of the defendants that the elder brother of the partners of the plaintiff firm has been marketing his goods under the trade name, Original SVS is concerned, he submitted that proceedings have been initiated against him, and in any event, there is no similarity between the colour scheme and get up of the label used by the elder brother of the partners of the plaintiff firm and that of the plaintiff. Learned counsel submitted that the colour scheme and getup of the labels used by the defendants are also not distinctive from that of the plaintiff and there is similarity not only in the labels and there is a phonetic similarity among the trademarks used by the plaintiff and the second defendant which would cause deception and confusion in the minds of the public. In so far as the colour scheme and getup of the label used by the defendants at the time of earlier proceedings are concerned, learned counsel submitted that though the second defendant used the trademark SVS, the colour scheme and get up were different and only after the second defendant failed in his earlier proceedings, he adopted the colour scheme and get up similar to that of the plaintiff. As regards the claim of the defendants that other oil manufacturers are also using the yellow-red combination in their labels and it is common in edible oil trade is concerned, learned counsel submitted that the plaintiff is not claiming any monopoly over the colours, yellow and red and the claim of the plaintiff is that the colour scheme and get up of the defendants should not be identical or similar to that of the plaintiff and so long as the colour scheme and get up are not identical and similar to that of the plaintiff, his submission was that none have any objection for the other traders to use any colour including yellow and red of their choice and he further submitted that the plaintiff is not claiming any monopoly over the red and yellow colours to be used in the container. He submitted that it is a case of passing off action and colour scheme and get up are relevant and the second defendant has not offered any explanation for the adoption of identical colour scheme and getup similar to that of the plaintiff. He submitted that the scope of deception and confusion is more in cases where the oil tins are brought in large numbers and due to close similarity in the colour scheme and getup there would be deception and confusion in the minds of the public who procure the oil in tins. He submitted that in so far as groundnut oil and sunflower oil in 15 kg. tins are concerned, the labels adopted by the defendants are deceptively similar to the colour scheme and get up of the plaintiff. As far as colour scheme and getup of the pouches of the defendants are concerned, he submitted that they are also identical with reference to pouches for the sale of groundnut oil by the plaintiff. As far as sunflower oil and palmolein are concerned, he submitted that the second defendant has adopted the colour scheme and getup similar to the colour scheme and getup used by the plaintiff for groundnut oil with a view to create confusion and deception in the minds of the public. He submitted that though pouches have been used for sale of oil from 1996, it cannot be said that the plaintiff has not earned goodwill and reputation in respect of the goods sold in pouches as it is not a new product and pouches have been introduced only for the purpose of convenience of the public to reach them easily and the plaintiff is the prior user. Learned counsel submitted that the public associate the colour scheme and getup of the plaintiff's label with the goodwill and reputation of its goods and business and the defendants have unfairly attempted to steal the same by imitating the label of the plaintiff. Learned counsel submitted that the label should not be dissected and the label has to be seen as a whole and what has to be seen is whether it is likely to mislead an unwary purchaser of average memory on seeing the deceptively similar labels of the defendants that they are the products of the plaintiff. Learned counsel also referred to several features which are found in the label of the defendants and submitted that the intention of the second defendant is to show that the business of the defendants is having a close connection with that of the plaintiff. Learned counsel submitted that in passing off action the asset protected is the goodwill and reputation and it is a fit case for the grant of interim injunction and the defendants are new to the trade and the balance of convenience lies in favour of the plaintiff and the defendants should be directed to revert back to use the colour scheme and get up which they were earlier using.
8. Mr. T.N. Rajagopalan, learned counsel for the respondents, on the other hand, submitted that the suit filed is not filed against proper persons and the plaintiff, in spite of knowledge that the first defendant is a firm represented by the second defendant, has not described the first defendant as a partnership firm and the second defendant as a partner of the said firm. He submitted that though in the plaint it is mentioned that the constitution of the first defendant firm is not known, a copy of partnership deed of SVN Agro Refineries has been filed and in spite of the same, the plaintiff has not taken steps to amend the cause title. Learned counsel submitted that pouches were introduced by the plaintiff only in the year 1996 for groundnut oil, and it is not known when pouches were introduced for sunflower oil. As far as palmolein is concerned, he submitted that the plaintiff started manufacturing and selling the same in 15 kg. containers in the year 1996. Learned counsel referred to earlier proceedings where the stand of the plaintiff was that the goods were marketed only by the trademark SVS and submitted that it implies that the colour scheme and getup are not relevant. Learned counsel submitted that the elder brother of the partners of the plaintiff firm is also selling his goods in the trade name, Original SVS and the plaintiff's products are known only as Mukkonam SVS (SVS on inverted triangle) and there is no confusion in the market as the plaintiff's goods are known only as Mukkonam SVS (SVS on inverted triangle) and the increase in the sales turnover of the plaintiff also indicates that the goods of the plaintiff are sold only on the basis of the trade name SVS and not on the basis of colour scheme and getup which are of no importance. Learned counsel also referred to various products marketed by the plaintiff and submitted that the plaintiff does not have any particular get up and colour combination and the colour combination and get up are not same even for the different oils marketed by the plaintiff. He also submitted that in so far as the plaintiff is concerned, the word SVS is prominently displayed on inverted triangle and in so far as the defendants are concerned, the word SVN is prominently displayed with a round over it and there are essential differences in the labels and there is no likelihood of confusion at all. He submitted that other oil manufacturers are also using the same colours, yellow and red. His submission is that the people purchase oils only by brand name and the colour combination does not assume much significance. Learned counsel submitted that the defendants have been using the colour combination from March, 2002 but the suit has been filed with a view to harass the defendants after nine months, that is, in the month of December, 2002 when the Supreme Court heard the earlier proceedings. Learned counsel also referred to the trade literature and submitted that in the earlier proceedings the plaintiff had stated that its goods were sold with the trademark SVS on inverted triangle and the plaintiff had not stated that its goods were identified by the colour scheme and getup of the label. Learned counsel submitted that the plaintiff has not established that its particular colour scheme and getup have been associated in the minds of the public and the plaintiff is not entitled to interim injunction. His submission is that the colour scheme and get up of the plaintiff are not similar to that of the defendants and the defendants did not use the SVS label with the colour combination as shown by the plaintiff. As far as calendars are concerned, the calendars are not sold and there is no similarity in the getup of the calendars issued by the plaintiff and the defendants. He submitted that the plaintiff has not made out any prima facie case and the balance of convenience is in favour of the defendants. He submitted that if injunction is granted it would cause irreparable loss and injury to the defendants and no loss would be caused to the plaintiff if the injunction is not granted. He submitted that the order of the learned Judge should be maintained and the appeal should be dismissed.
9. We heard learned counsel for the appellant and the learned counsel for the respondents. We are of the view that the only point that arises for consideration is whether the learned Judge was correct in dismissing the petition to grant interim injunction as prayed for by the plaintiff.
10. As far as the submission of learned counsel for the defendants that the first defendant has not been properly described is concerned, the plaintiff in the plaint has stated that the constitution of the first defendant was not known to the plaintiff on the date of filing of the suit. Though the partnership deed dated 26.11.2001 was enclosed along with the typed-set of papers filed by the defendants, the defendants have not furnished the details of constitution of the first defendant as on the date of filing of the suit, and further it is a matter of evidence and that has to be decided at the time of trial.
11. We find that though the learned Judge was correct in observing that by virtue of the award of the Arbitrators, the business of the firm in the name SVS Oil Mills and the assets used in the course of business were allotted to the partners of the plaintiff firm, namely, S.V. Chandrapandian, S.V. Kasilingam, S.V. Ramachandran and the second defendant S.V. Natesan, it may not be necessary to go into the question and record a finding that after S.V. Natesan retired from the firm, the goodwill of the firm and the trademark SVS on inverted triangle was not valued and hence, the second defendant has a share in the goodwill of the firm and in the trademark SVS on inverted triangle. We hold that if the second defendant has a share in the goodwill of the firm as well as in the mark SVS on inverted triangle, it is for him to work out his rights in a separate proceeding. It is a case of passing off action on the allegation that the colour scheme and getup of the defendants are similar to that of the plaintiff. Moreover, it is the case of the plaintiff that the defendants have been using the trademark SVN with similar colour scheme and getup of the plaintiff after the disposal of O.S.A. No. 222 of 2001 on 19.4.2002. We are of the view that if the second defendant has the right to adopt the trademark SVS with colour scheme and get up, it is for him to establish his rights in a separate proceeding. We are prima facie of the view that by retirement from the firm if the second defendant has not released his interest in the goodwill and his accounts are not settled towards the goodwill, the extent of his right to use the goodwill and the trademark SVS is a matter of evidence. Moreover, in the trademark SVS and in the Certificate of Registration of trademark SVS, the name of the second defendant was deleted consequent on his retirement from the partnership firm by deed dated 22.2.2001. The second defendant challenged the order of the Registrar of Trade Marks deleting his name in the Certificate of Registration in T.M.A. No. 3 of 2001 before this Court and he withdrew the same and the appeal was dismissed as withdrawn by a judgment dated 21.1.2002. Further, when the second defendant used the word SVS, it was objected to by the plaintiff and the plaintiff filed a suit and interim injunction was granted in O.A. No. 505 of 2001 in C.S. No. 433 of 2001 by order dated 27.6.2001 against the use of the trademark SVS by him and the second defendant was restrained from using the mark SVS either as prefix or suffix and pass off their edible oil of any kind and Vanaspathi. Against the order granting interim injunction, the second defendant preferred an appeal in O.S.A. No. 222 of 2001 and in that appeal, the second defendant gave an undertaking before the Court that he would not use the trade name SVS and he started the business using the trade name SVN. The earlier proceedings prima facie show that the second defendant was restrained from using the trademark SVS. It is true that even after a partner retires from a firm, he will be entitled to the share of profits of the firm till the accounts are finally settled between the outgoing partner and other partners, if the assets of the firm in which he had a share are used by the continuing partners. It is not the case of the second defendant that he has not retired from the firm and if he has any interest in the trademark SVS, it is for him to work out his remedy for accounting if other partners continue to exploit the trademark SVS. Further, we are of the view that in the present proceeding the question whether the second defendant is entitled to use the trademark SVS does not arise, as the said issue has already been concluded against the second defendant and the second defendant, as a matter of fact, has started using the trademark SVN and the plaintiff in the present proceedings has not questioned the use of the trademark or trade name SVN.
12. We are also unable to accept the submission of the learned counsel for the defendants that in spite of the undertaking given in C.S. No. 433 of 2001, the plaintiff has reopened the entire dispute under the pretext of colour scheme and getup. We find from the judgment passed in O.S.A. No. 222 of 2001 dated 19.4.2002 that the undertaking given by the second defendant herein was that he would not use the trade name SVS and he would do the business in the name and style, SVN for which the plaintiff expressed no objection. Hence, the submission of the learned counsel for the defendants that in spite of the undertaking given by the second defendant in C.S. No. 433 of 2001 which was disposed along with O.S.A. No. 222 of 2001, the plaintiff has reopened the entire issue under the pretext of colour scheme and getup is not sustainable. It must be said that the plaintiff is not seeking injunction in the present proceedings against the use of the word, SVN.
13. We are also unable to agree with the learned Judge that the plaintiff is litigating the same issue after having expressed no objection for the second defendant to use the trade name, SVN to market edible oil in C.S. No. 433 of 2001 as the plaintiff has not raised any dispute as to the use of the trade name SVN by the second defendant. The case of the plaintiff in the present suit is that when it instituted the earlier suit in C.S. No. 433 of 2001, the colour scheme and getup of the second defendant's labels and pouches were different and now the defendants have started using similar colour scheme and get up in the labels as that of the plaintiff. In fact, in the earlier suit, the stand of the second defendant when he was using the trademark SVS was that the colour scheme and getup then used by him were different and the people would not be misled by the use of the trademark SVS by him. We have gone through the copies of labels used by the defendants which were subject matter of the earlier proceedings which are found in page Nos. 9 to 14 of Vol.II of typed-set of papers filed by the plaintiff and the labels relate to 15 kg. tins of refined groundnut oil, refined sunflower oil and palmolein oil used by the defendants up to November, 2002. We find that the getup and colour combination of the labels are different from that of the labels now used by the defendants. Even after the judgment in O.S.A. No. 222 of 2001 was made in April, 2002, the getup and colour scheme of labels used by the defendants were different up to November, 2002, though the defendants used the trade name SVN. Hence, there was no occasion for the plaintiff to seek the relief of injunction as regards the colour scheme and getup as the colour scheme and getup of the labels used by the defendants were different and the plaintiff could not have anticipated or foreseen and obtained the relief of injunction against the defendants for the future use of the colour scheme and getup similar to that of the plaintiff at some future point of time.
14. We are unable to accept the submission of Mr. T.N. Rajagopalan, learned counsel for the respondents that the oil sold by the plaintiff is known by the name SVS on inverted triangle and the stand of the plaintiff in the earlier proceedings was that its goods were identified by the mark SVS and hence, the colour scheme and getup are not of much relevance. We are of the view that in the earlier proceedings there was no occasion to go into the question of similarity in the colour scheme and getup in the labels as the defendants have used different colour scheme and getup in the labels with the trade name SVS. Since the colour scheme and getup in the labels used by the defendants were different, the question of similarity in the colour scheme and getup did not arise for consideration in the earlier proceedings and it is futile to refer to the earlier proceedings and contend that the stand of the plaintiff was that the goods were identified in the market only by the name, SVS on inverted triangle and the colour scheme and getup in the labels are of no consequence.
15. The other submission of Mr. T.N. Rajagopalan, learned counsel is that the elder brother of the partners of the plaintiff firm is still using the trade name SVS under the caption 'Original SVS' and the plaintiff is using the trademark SVS with inverted triangle. He submitted that even though in the market the articles bearing the mark SVS manufactured by two manufacturers are available, there is no confusion in the minds of the public. He also referred to the sales turnover figures of the plaintiff to show that the sales turnover of the plaintiff has risen year by year and the plaintiff has not suffered any loss though along with its products bearing the trademark SVS with inverted triangle, there are products in the market with the mark 'Original SVS'. We have referred to the earlier litigation between the parties that the partners of the plaintiff firm including the second defendant who was then a partner in the plaintiff firm instituted a suit against two other brothers of the partners of the plaintiff firm and an objection was raised by the elder brother that until the arbitral proceedings are settled, he is entitled to use the mark SVS. The suit instituted against the elder brother of the partners of the plaintiff firm was withdrawn with liberty to file another suit after the arbitral proceedings are over. Though it is stated by the counsel for the plaintiff that the colour scheme and getup used by the elder brother are not identical to the colour scheme and get up used by the plaintiff, we do not propose to go into the question as the elder brother is not a party in the present suit and we are not inclined to express any view on the same. We are of the view that even assuming that the colour scheme and getup are similar, that is not a ground for the defendants to use the similar colour scheme and getup in view of litigation between the partners of the plaintiff firm and their elder brother.
16. It is true that the plaintiff cannot claim any monopoly over any colour or scheme and the colours and it is also seen that yellow and red colours are commonly used by oil manufacturers in the containers for the sale of edible oil. Nor is it the case of the plaintiff that it has any monopoly right over the colours yellow and red, but the case of the plaintiff is that the second defendant was a partner of the plaintiff firm till February, 2001 and the second defendant has known the reputation and goodwill of the plaintiff's trademark SVS on inverted triangle. The case of the plaintiff is that after the second defendant left the firm, he started business using the word SVS and when the use of the word SVS was objected to and this Court passed an order holding hat the second defendant should not use the trade name SVS, the second defendant changed the trade name into SVN instead of SVS but started to use the labels with the similar colour scheme and getup of the plaintiff from December, 2002 to exploit the goodwill and reputation of the plaintiff to market his products as that of the plaintiff. As already observed by us, no manufacturer can claim any monopoly over a particular colour as it is permissible for any manufacturer to use any colour on his packages. It is true that while the brand name of a manufacturer is a relevant factor, the colour scheme and getup of the container or packages are also equally important in the marketing of the goods as the customers would normally associate the colour scheme and getup of the packages with the products of their choice. There are many cases where the popular consumer goods are identified by the colour scheme and the way in which the articles are packed. We are of the view that the impression regarding the colour scheme and the getup in the labels or container would get imprinted in the minds of the customers and that would carry in their mind in choosing the product by their appearance in the departmental shops or in the super market or in any other shop. The Supreme Court has repeatedly held that what has to be seen in the case of a passing off action is the mind of an unwary purchaser with average intelligence and imperfect recollection. When such a person goes to the market for the purchase of an article, the entire layout including the brand name, colour scheme and getup of the container would be the guiding factor in the purchase of the article. We are prima facie of the view that the domestic articles are purchased not only by their brand names, but also by the colour scheme and getup of the container in which the goods are marketed. In our view, it would be totally unrealistic to focus one's attention to the brand name of an article ignoring the colour scheme and getup in the case of passing off action. In our view, even in the case of articles of daily use, like toothbrush, the same colour scheme and getup found in two articles with slight variation in brand name of the article would cause confusion in the mind of the user. It is true that a customer may select the oil on the basis of the brand name. However, if the articles of the same kind are displayed in a shop with slight variation in the trade name with the same colour scheme and getup, there is likelihood of deception to be caused in the mind of an unwary purchaser in the purchase of the article. The oil is not sold on medical prescription, but it is openly available and openly sold in the shops and departmental stores. We are of the view that if same colour scheme and getup of the labels of the plaintiff are used by the defendants with the trademark phonetically similar to the plaintiff with reference to the same kind of articles it would create confusion in the minds of unwary purchasers while purchasing the articles of one manufacturer as that of the other manufacturer. We are unable to accept the wide proposition submitted by the learned counsel for the respondents that since the plaintiff's articles are sold only by the trademark SVS on inverted triangle which are prominently displayed on the label, the colour scheme and getup are not important. We have already observed that it is not open to the plaintiff also to claim monopoly over the particular colour or getup. As rightly submitted by Mr. Sharma, learned counsel for the appellant, there cannot be serious objection for the use of same colours by the defendants with a different getup. Equally, there is no explanation from the defendants for their change in the getup and colour of the label from the one previously used and in the absence of any explanation we find that there is some force in the submission of Mr. Sharma, learned counsel for the appellant that the defendants have adopted in the label the same colour scheme and getup as that of the plaintiff with a view to cash on the reputation and goodwill of the plaintiff.
17. We are of the view that the material form, colour and getup of the wrapper or label or container of the articles are the physical means of expression and the design of the container or the label is of great significance as it is meant to catch the vision of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and getup of the wrapper or container as well. It is well known that there are several eye-catching designs and the customers familiar with the articles would invariably be guided and attracted to purchase goods by the sight of label and they would invariably be guided by the physical appearance of the labels used for the articles for sale. We are of the view, there is a power behind the design of the label as the customers have the intuitive instinct to select the goods by the design, colour and getup and the trade name and if the goods of same kind with the same colour scheme and getup in the labels belonging to two manufacturers with phonetic similarity in trade names are exhibited or offered for sale, a normal consumer of average intelligence with imperfect memory would take one article as belonging to other.
18. Learned Judge referred to the decision of this Court in S.P.S. Selvaraj v. Edward Nadar (1977 II MLJ 441) to hold that the colour is not material as there is distinctive trademark SVS on the inverted triangle. The decision of this Court in S.P.S. Selvaraj case is not a case of passing off and hence, this Court held that the question of colour was not material. This Court held that there was no similarity between two trademarks used by the parties and it was also found that the only similarity was the colour and in that context, this Court held that since it is not a case of passing off, the plaintiff was not entitled to the interim injunction.
19. The other reasoning of the learned Judge is that same colour combination is used by other oil companies. Learned Judge found that more number of oil companies appear to be using yellow and red colours and when such colour combination is generally adopted by other manufacturers, it is not open to the plaintiff to make complaint against the second defendant to the use of red and yellow colouRs. We are of the view that there can be no objection for the defendants to use the colours yellow and red and the stand of the plaintiff is that the defendants have been using the same colour and same getup with the trademark phonetically similar to that of the plaintiff. Even otherwise, the fact that other traders are using the colours red and yellow would not justify the conclusion that the colour scheme, getup and trade name of the plaintiff are common to the oil trade. Learned Judge noticed that the defendants adopted the following colour scheme for their oils:
" Sunflower Oil ? Yellow and Green SVN printed in Red.
Sun Gold ? Yellow and Green and Red SVN in Red Sun Gold in Green.
Palmolein Oil? Yellow Label SVN Printed in Red RBD Palmolein oil Printed in English and Tamil in Blue.
Palm Gold? Yellow Background with Diamond Green Palm Tree printed and Encircled printings in Green."
We are of the view that if the products of the plaintiff sans colour scheme and getup are marketed with the trade name SVS on the inverted triangle alone, there is a chance for the consumer public to believe that the goods do not come from the appellant's source or that the plaintiff has changed its getup. We are of the view that the colour scheme and getup including the inverted triangle have a revelatory effect creating an impression in the minds of the consumer public who regularly buy the plaintiff's articles. We are of the view that the power of colour scheme and getup is that it would self disclose to a prospective purchaser that the goods have come from a particular manufacturer and the prospective purchaser will have an intuition by the mere look of the label that the goods are from a particular manufacturer.
20. One other factor that is relevant is that in the earlier proceedings initiated by the appellant against the defendants for the use of the trademark SVS, the stand of the defendants, as seen from paragraph-3 of the order made in O.A. No. 505 of 2001 in c.S. No. 433 of 2001 dated 27.6.2001, was that the colour combination of the label and getup and the placement of family letters SVS were distinctive from that of the plaintiff as such no confusion or deception would arise in the market. The stand of the defendants in the earlier proceedings show that the colour combination of the label and getup are equally important when they used the trade name SVS as the second defendant has stated that it would not cause confusion in the minds of the public because of the different colour combination and getup used by them in the labels. We are prima facie of the view that when the defendants were restrained from using the expression SVS, they appear to have started using the colour combination of the label and getup of the plaintiff in the labels and also used the expression SVN which is phonetically similar to SVS to market their products to cash on the reputation of the plaintiff. We are of the view the adoption of the colour combination and getup identical to the plaintiff would cause confusion and deception in the minds of the consumer public.
21. We are prima facie of the view that there is a close similarity between the labels of the plaintiff and the labels of the defendants with reference to sunflower oil and palmolein though a different colour combination has been used by the plaintiff for groundnut oil, palmolein oil and sunflower oil. As pointed out by Mr. Sharma, learned counsel for the appellant/plaintiff, as far as 15 kg. tins of groundnut oil and sunflower oil are concerned, we are prima facie of the view that the labels adopted by the defendants are similar to that of the plaintiff. Further, as far as 15 kg. tins of oil are concerned, the submission of the learned counsel for the defendants is that since the tins are purchased in large number by hoteliers and canteens, that would not create any confusion at all as the orders are placed by brand name. Learned counsel for the appellant/plaintiff submitted that though tins are purchased in large number by hoteliers and canteens, since there is similarity in the colour scheme and getup, that would cause confusion and deception in the minds of the consumers if the tins of the defendants are delivered as that of the plaintiff. As far as the goods marketed in large quantity, namely in 15 kg. tins, are concerned, it is seen that the labels of the defendants either for groundnut oil or sunflower oil are almost similar to that of the plaintiff and the fact that the defendants have adopted similar colour combination and getup though with slight modification in the label would also create confusion and deception in the minds of the consumer public. Though it is contended that the goods are purchased in large number by hotels and others, if the defendants' products are supplied as that of the plaintiff, we are prima facie of the view, the buyers may believe that the products have come from the plaintiff's source due to the similarity in colour scheme and getup of the labels. As far as pouches are concerned, the plaintiff, no doubt, has been using the pouches from 1996 and the colour scheme and getup of the labels used by the plaintiff for sunflower oil and palmolein oil are slightly different. The defendants have been adopting uniform colour scheme and getup for the pouches for the sale of groundnut oil and other products. We have seen the labels used by the defendants and we are prima facie of the view that in so far as pouches are concerned, the defendants have adopted a uniform pattern of label for refined groundnut oil, palmolein oil and the pattern is similar to the pattern of the plaintiff for the sale of groundnut oil. We are prima facie of the view that the similar pattern adopted by the defendants for the sale of different kinds of oil as that of the plaintiff's pouches would cause confusion and deception in the minds of the consumer public.
22. So far as the submission of the learned counsel for the defendants that the action of the plaintiff is not bona fide as they sought for injunction against the printing of calendars is concerned, we are of the view that the calendars, which are daily tear-off calendars, are printed as a mode of advertisement. However, we are of the view it is not necessary to consider the question as calendars for 2004 had already been printed and circulated and it is not known what would be the colour scheme and getup of calendars for the year 2005 and in the absence of any such material, we are not inclined to pass any order with reference to printing and distribution of calendars.
23. As far as the view of the learned Judge that the business of the plaintiff is not affected even after the adoption of similar colour scheme by the defendants is concerned, in the case of passing off action the question whether the business of the plaintiff is actually affected is not material as the real question is whether the defendants have marketed their goods by causing deception in the minds of the public. Moreover, we do not find any reason to accept the submission of the learned counsel for the defendants that since the business of the plaintiff is not affected, they may be permitted to use the same colour combination and getup of the labels of the plaintiff.
24. The other submission of learned counsel for the defendants is that the plaintiff has not instituted the suit in a bona fide manner and the fact that the partners of the plaintiff firm have issued a notice to the second defendant not to establish rival industry clearly shows that the partners of the plaintiff have attempted to prevent the establishment of the rival industry. The letter dated 1.2.2001 was issued by the partners of the plaintiff firm soon after the retirement of the second defendant on 22.2.2001. After that, the second defendant established his business and he used the expression SVS for marketing the edible oil and that was subject matter of consideration before this Court in O.S.A. No. 109 of 2002 which came to be disposed of by this Court by judgment dated 18.6.2002. The order passed by this Court shows that the plaintiff had objected to the use of the expression SVS by the second defendant and the plaintiff never objected to the second defendant to carry on his business. Hence, the letter dated 1.2.2001 which was issued prior to the earlier suit is not of much relevance in considering the question of bona fide of the plaintiff.
25. It is no doubt true that the learned Judge has noticed the decision of the Supreme Court in PARLE PRODUCTS V. J.P. & CO., MYSORE and the decision of this Court in RAMACHANDER LAXMINARAYAN KARVA v. JAGANNATH KHUPCHAND KARVA (2003 I MLJ 246) and the decisions of the Delhi High Court in Anglo-Dutch P.C. & V. Works v. India Trading House and 1969 Delhi LT 469. Learned Judge noticed the principle laid down by the Supreme Court that 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, it would amount to passing off action. Learned Judge also noticed that the labels need not be placed side by side to find out the differences in the design and if there are no such differences, whether they are of such character as to prevent one design from being mistaken for the other, and what is to be seen is whether it would cause confusion in the minds of the consumer public. This Court in Ramachander Laxminarayan Karva case (2003 I MLJ 246) has held that if there is similarity in two trademarks, injunction can be granted. This Court in Ramachander Lakxminarayan Karva case noticed the decision of the Supreme Court in Amridhara Pharmacy v. Satya Deo and the Supreme Court observed as under:-
"It will be noticed that the words used in the sections and relevant for our purpose are "likely to deceive or cause confusion". The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trademark is not registrable by reason of Clause (a) of Sec. 8, or Sub-sec.(1) of Sec. 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trademark applied for is not likely to deceive or cause confusion. In cases in which the tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parkar, J. in Re. Pianotist Co.'s Application, (1906) 23 R.P.C. 774 which was also a case of the comparison of two words - 'You must take the two words. you must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks'."
26. Learned Judge refused to grant interim injunction on the basis that the colour scheme and getup were not subject matter of the earlier proceedings in C.S. No. 433 of 2001. We have already held that the colour scheme and getup used by the defendants were different and we also noticed the stand taken by the defendants in the earlier suit that because of the different colour scheme and getup of the label used by the second defendant, there was no chance for deception or confusion in the minds of the public, though the defendants used the trade name SVS in the labels for marketing their goods. As far as the second reasoning of the learned Judge that the colours yellow and red are used by large number of traders is concerned, we hold that there can be no objection for the second defendant to use the colours, yellow and red, but there shall not be a close similarity in the colour scheme and getup used by the defendants with that of the plaintiff, particularly when the second defendant is using the trademark SVN which is phonetically similar to the trademark of the plaintiff, SVS. The third reason is that the colour combination and getup are adopted by other oil traders. We have held that there is nothing to show that other manufacturers are using the same colour or getup in their labels, and further it is not pointed to us that there is any phonetic similarity between the trademarks employed by them and the trademark of the plaintiff. As far as the reasoning that the plaintiff has not established the distinctive colour scheme and getup of the labels is concerned, learned Judge proceeded on the basis that the class of purchaser being house-wife or housemaid though may not be literate, but would certainly have the sharp mind in purchasing the right product and would certainly go by the device inverted triangle and not by the colour combination and getup. No doubt, it is true that house-wife and housemaid have sharp mind, but the Supreme Court in CADILA HEALTH CARE LTD. v. CADILA PHARMACEUTICALS LTD. , after noticing the decisions in Amritdhara Pharmacy v. Staya Deo and S.M. Dychem Ltd. v. Cadbury (India) Ltd. (AIR 2000 SC 2114), held as under:-
"These observations appear to us to be contrary to the decision of this Court in Amritdhara's case (supra) where it was observed that the products will be purchased by both villagers and townfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trademark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dyechem's case, (supra) does not, in our opinion, lay down correct law and we hold accordingly."
27. As far as the reasoning of the learned Judge that the plaintiff has not established that edible oil is associated in the mind of the public only by colour scheme and getup is concerned, the case of the plaintiff is that the plaintiff has been using the same colour scheme and getup since 1969. As far as edible oil being sold in pouches are concerned, the claim of the plaintiff is that the plaintiff has started using the same since 1996. In so far as palmolein oil is concerned, the claim of the plaintiff is that the plaintiff has been using the same label from 1996. Though it is not clearly stated as to when the plaintiff has started to market palmolein oil in pouches, we have already held that the defendants have been using the colour scheme and getup for palmolein oil similar to the pouches of the plaintiff used for the sale of refined groundnut oil. As far as vanaspathi is concerned, the defendants are not manufacturing vanaspathi. But, so far as sunflower oil is concerned, the plaintiff has introduced sunflower oil in tin container of 15 kg. since 1999. So far as pouches are concerned, the reasoning for palmolein oil will also apply for sunflower oil.
28. We are of the view that besides the inverted triangle along with the expression SVS, the colour scheme and getup of the label of the plaintiff are also relevant. As already held by us, it will not be correct to focus one's attention to one part of the label, namely, inverted triangle with SVS mark alone ignoring the rest of them. We are prima facie of the view that the plaintiff has established that there is similarity between the labels of the defendants in marketing edible oils and other oils and the labels used by the plaintiff, whether it was sold in bulk quantity or in small quantity in pouches. We are of the view that it would cause irreparable loss and injury to the plaintiff if the defendants are permitted to trade with the labels with close similarity to that of the plaintiff.
29. Learned counsel for the plaintiff has referred to number of cases and also relied upon certain passages of text books which are as under:-
1. Kerly's Law of Trade Marks and Trade Names (13th Edition) (pages 513 and 514).
2. Narayanan's Law of Trade Marks and Passing Off (5th Edition) (pages 663 and 664).
3. EBRAHIM CURRIM AND SONS v. ABDULLA SAHIB (AIR 1934 Mad 226)
4. REGISTRAR OF TRADE MARKS v. ASHOK CHANDRA RAKHIT LTD. .
5. DURGA DUTT SHARMA v. N.P. LABORATORIES
6. RUSTON & HORNBY LTD. v. Z. ENGINEERING CO.
7. ANGLO-DUTCH P, C. & V WORKS v. INDIA TRADING HOUSE
8. ELLORA INDUSTRIES v. BANARASI DASS GOEL
9. B.K. ENGINEERING CO. v. U.B.H.I. ENTERPRISES
10. KALI AERATED WATER WORKS v. RASHID
11. M/s. PIDILITE INDUSTRIES PVT. LTD. v. M/s. MITTIES CORPORATION & ANOTHER
12. M/s. HINDUSTAN PENCILS PVT. LTD. v. M/s. INDIA STATIONERY PRODUCTS CO. & OTHERS
13. GTC INDS. v. ITC LTD. (AIR 1992 MAD 233)
14. N.R. DONGRE & OTHERS v. WHIRLPOOL CORPORATION & ANOTHER
15. MANOHAR SINGH CHADHA V. SHEETAL SWEETS (2000 PTC 320)
16. CADILA HEALTH CARE LTD. v. CADILA PHARMACEUTICALS LTD.
17. S.V.S. OIL MILLS v. SVS RAJKUMAR (2002 (24) PTC 330(MAD)
18. JONES v. HALLWORTH [Reports of Patent, Design and Trade Mark cases, Vol. XIV, No. 8 Mar, 10, 1897; (14 R.P.C. 225)].
19. COUNTY CHEMICAL CO. LTD. v. FRANKENBURG (Reports of Patent, Design and Trade Mark Cases Vol. XXI, No. 31 - Nov. 23 1904, page 722 & 726).
20. WHITE HUDSON CO. LTD. v. ASIAN ORGANISATION LTD. (1965 RPC 45 (PC).
21. F. HOFFMAN-LA ROCHE & CO. AG'S CASE (1972 RPC 1 CA)
22. COLGATE PALMOLIVE LTD. v. K.F. PATTRON (1978 RPC 635 (PC).
23. V.S.T. INDUSTRIES v. R.D.S. INDUSTRIES (Order in APPLN. Nos. 972-973, 5308 to 5310 of 1995 in C.S. No. 1368 of 1995 on the file of this Court dated 22.2.1996).
30. Learned counsel for the respondents relied upon the decision of the Delhi High Court in SAMSONITE CORPORATION v. VIJAY SALES (1998 PTC (18) 372). We have gone through the decision and in so far as infringement of copyright is concerned, the decision has no application as it is a case of passing off. In CADILA HEALTH CARE LIMITED v. CADILA PHARMACEUDICALS LIMITED (2001) 2 CTC 430) the Supreme Court, after referring to various judgments, laid down the following tests in considering the question of deceptive similarity:
"(a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing order for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks."
31. Applying the above tests laid down by the Supreme Court, we find that the plaintiff has been using its trading style and trademark for quite a long period and continuously whereas the defendants have entered into the said field only recently. Secondly, the goods of the plaintiff have acquired distinctiveness and are associated in the minds of the general public as goods of the plaintiff. Thirdly, the nature of activity of the plaintiff and that of the defendants are the same or similar. Fourthly, the goods of the parties with which the trade mark of the plaintiff is associated are the same or similar. Fifthly, the user of similar colour scheme and getup by the defendants as that of the plaintiff is likely to deceive and cause confusion in the mind of the public and injury to the business reputation of the plaintiff. Sixthly, the sphere of activity and the market of consumption of goods of the parties are similar. Lastly, the customers of the plaintiff inter alia include uneducated, illiterate and unwary customers who are capable of being deceived, confused or misled.
32. In this connection, it is also useful to refer to the decision of the Delhi High Court in ANGLO-DUTCH P.C. & V. WORKS v. INDIA TRADING CO. wherein Yogeshwar Dayal, J., as His Lordship then was, noticed the observation of Harman Lord Justice in the Court of Appeal in the case of F. Hoffmann-La Roche and Company A.G. v. D.D.S.A. Pharmaceuticals Ltd. (1972) R.P.C.1) wherein Harman Lord Justice held as under:-
"Goods of a particular getup just as much proclaim their origin as if they had a particular name attached to them, and it is well known that when goods are sold with a particular getup for long enough to be recognized by the public as goods of a particular manufacturer it does not matter whether you know who the manufacturer is."
Moreover, there is no explanation from the defendants to the question as to why they changed the colour scheme and getup of their labels similar to that of the plaintiff.
33. The other decision relied upon by the learned counsel for the respondents is the decision of the Delhi High Court in J. & P. COATS LTD. v. CHADHA & CO.(INDIA) wherein the Delhi High Court held that in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. The plaintiff has prima facie established that there is similarity in the colour scheme and getup of the labels of the defendants and there is also phonetic similarity between the trade names SVS and SVN and the defendants have not prima facie established that the use of similar colour scheme and getup as that of the plaintiff would not cause confusion and deception in the minds of the consumer public. In the view we have taken, it is not necessary to consider other decisions relied upon by the learned counsel for the appellant.
34. We therefore hold that the plaintiff has prima facie established that the colour scheme and getup of the labels used by the defendants are similar to that of the plaintiff and also established its reputation and goodwill it enjoys which are clear from the sales turnover of the plaintiff. The plaintiff has also established that the second defendant having failed in his attempt to use the trademark SVS has changed the colour scheme and getup of the label similar to that of the plaintiff and marketed his edible oil and other products with the trade name SVN with the similar colour scheme and getup of the plaintiff. We are prima facie of the view that there would be irreparable loss to the plaintiff if the defendants are allowed to market their goods with the similar colour scheme and getup in the labels similar to that of the plaintiff and it is always open to the defendants to change their colour scheme and getup different from that of the plaintiff and by that, no harm or loss would be caused to the defendants.
35. Before parting with the judgment, we would like to deal with one other point which was addressed by the learned counsel for the appellant that the learned Judge was not correct in awarding costs of a sum of Rs. 10,000/- against the appellant/plaintiff. Normally, we would not have interfered with the order awarding costs, but the learned Judge proceeded on the basis that the plaintiff has abused the process of the Court by proliferating the litigations and directed the plaintiff to pay costs of Rs. 10,000/- to the Tamil Nadu Legal Services Authority with a view to make the plaintiff self-restraint in filing the litigations in future. As far as the question of proliferation of litigations and abuse of process of the Court are concerned, we find that the learned Judge may not be justified in holding that the plaintiff has the tendency of proliferating the litigations. We have already noticed that the plaintiff is a firm and there was an arbitral award and the partners of the plaintiff firm and the second defendant who was a partner at the relevant time took steps to make the award as a rule of court and also obtained a decree of this Court in terms of the award. Against the judgment of the learned Judge upholding the arbitral award, the elder brothers of the partners of the plaintiff firm filed an appeal for which the plaintiff cannot be blamed and this Court, in the appeal, held that the appeal should be allowed on the ground that the award was not registered. When there was an adverse judgment affecting their interest, the partners of the plaintiff firm including the second defendant filed an appeal before the Supreme Court and the Supreme Court held that the award need not be compulsorily registered and remanded the matter to this Court. Then, a Bench of this Court ultimately held that the award was enforceable. Against that decision of this Court, the elder brothers of the partners of the plaintiff firm filed an appeal before the Supreme Court and the Supreme Court also upheld the judgment of the Division Bench of this Court. It is relevant to mention here that in the litigations that went up to the Supreme Court the second defendant was a partner in the plaintiff firm and the plaintiff cannot be blamed for taking steps to enforce the award of the arbitrators as a decree.
36. It is also relevant to notice that the second defendant retired from the partnership on 22.2.2001 and after that, he started the business using the trademark SVS in the labels used by him which forced the plaintiff to file a suit and the plaintiff also obtained interim injunction against the use of the trade name SVS by the second defendant. Against the order, it is the second defendant who filed an appeal and he withdrew the appeal on certain conditions and for the said litigation also, the plaintiff cannot be blamed as the Court found that the plaintiff was justified in its stand that the second defendant should not use the trademark SVS in the labels. The plaintiff took steps before the Regional Director of Companies challenging the incorporation of the company SVS Agro Refineries Pvt. Ltd. by the second defendant and the Regional Director of Companies accepted the case of the plaintiff and the incorporation of the company SVS Agro Refineries Pvt. Ltd. by the second defendant was cancelled. The plaintiff also took steps before the Registrar of Trade Marks to delete the name of the second defendant as one of the joint proprietors of the trade mark SVS as the second defendant ceased to be a partner and the Registrar of Trade Marks deleted the name of the second defendant as one of the joint proprietors of the trade mark SVS. The second defendant challenged the order of the Registrar of Trade Marks and the appeal filed by the second defendant was dismissed as withdrawn. A writ petition was filed by the second defendant challenging the order of the Regional Director of Companies which was also dismissed as withdrawn and against that, an appeal was preferred by the second defendant and he also withdrew the appeal. Therefore we are of the view that for all these litigations the plaintiff cannot be blamed and it cannot be stated that the plaintiff has proliferated the litigations and abused the process of the Court warranting award of costs of Rs. 10,000/- against the plaintiff. We hold that the costs has been awarded not on proper grounds and delete the costs of a sum of Rs. 10,000/- awarded against the plaintiff.
37. In the result, the appeal stands allowed except in respect of calendar Document No. 50 and other trade literature and the respondents shall pay costs of a sum of Rs. 5,000/- to the Tamil Nadu State Legal Services Authority. The judgment of this Court shall remain suspended for a period of one month from this day. Consequently, connected C.M.P. Nos. 17920 & 17921 of 2003 are closed.