Madras High Court
Mahendra T.Thakkar vs N. Ranga Rao & Sons Pvt. Ltd on 28 April, 2018
Author: N. Sathish Kumar
Bench: N. Sathish Kumar
A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on Delivered on
14~10~2019 25~10~2019
CORAM:
THE HONOURABLE MR.JUSTICE N. SATHISH KUMAR
A.Nos.7501 and 7502 of 2018
in C.S.No.296 of 2018
1. Mahendra T.Thakkar
Trading as Prakash Trading Co.,
Pillaiyar Kulam, Inamkarisalkulam P.O.
Srivilliputhur 626 125 and also at
Jalaram Parkchali, No.1, Jaska Road,
Harij-384240, Gujarat.
2. Tribhuvandas V. Thakkar
Trading as Prakash Kumar Tribhuvandas
Jalaram Parkchali, No.1, Jaska Road,
Harij-384240, Gujarat. .. Applicants/Defendants
.Vs.
N. Ranga Rao & Sons Pvt. Ltd.,
PB.No.52, Vani Vilas Road,
Mysore-570004
And whose branch office is at
T.S.109, Block No.3, Poomagal,
5th Street, Ekkaduthangal,
Chennai - 600097. .. Respondent/Plaintiff
A.Nos.7501 and 7502 of 2018 have been filed to vacate the
interm injunction granted in O.A.No.470 and 471 of 2018 respectively
in C.S.No.294 of 2018 dated 28.04.2018.
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http://www.judis.nic.in
A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
For Applicants : Mr. Rajesh Ramanathan
For Respondent : M/s. K. Rajasekaran
COMMON ORDER
These applications have been filed to vacate the order of injunction granted by this Court in O.A.Nos.470 and 471 of 2018 in C.S.No.296 of 2018.
2. It is the contention of the Applicants/Defendants that the Plaintiff is from Karnataka and is not at all working for gain in Chennai within the jurisdiction of the Hon'ble Court. The Defendants are from Gujarat and interior Tamil nadu and are not doing business within Chennai jurisdiction of this Court. The suit is fraudulently framed as though to suggest that the Plaintiff commercially deals in safety matches where as in reality Plaintiff are manufacturer and trader in Agarbathi alone. The Plaintiff wantonly played fraud on the Defendant and this Court by suppressing and withholding their clause 34 Registration Certificate for the Cycle Brand which expressly shows that 2/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 the Plaintiff does not commercially manufacture or sell safety matches. The Plaintiff offers safety matches as a compliment to the buyers of cycle brand Agarbathi and has no independent commercial use of Cycle Brand for safety match. The Order has been obtained without placing the registration for cycle brand in Class 34.
2. It is their further contention that the Applicants have been engaged in the trade of manufacturing and sale of safety matches. The mark "Thilak" and "CHIDYA". Apart from these two Trademarks, the other trademark under brand name "CYCLE" has been adopted in the year 2003 for the goods "SAFETY MATCHES" and hence filed Trademark application in Application No.1386815 under Class 24 on 22.09.2009 with user date as 01.05.2003 for sale in the state of Gujarat. The applicants honestly adopted the said Trademark "Cycle" in the year 2003 in respect of Safety Matches. There was none using a similar trademark in respect of the said goods for commercial sale. The applicant application was consciously filed with an area and territorial restriction in order to safeguard their legitimate interests, without any business jealousy. It is also stated that the applicants are the 3/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 registered owner of the copyright in the artistic work contained in the device. Before applying for copyright protection, the TM-60 was filed on 14.01.2016 to search for identical trademark in the artistic work. On 11.2.2017 the said certificate was issued by the Trademark has been issued by the Trademark Registry with the observation that "no Tradearks identical with or deceptively similar to the said artistic works has been applied for registration under the Trade Marks Act 1999".
3. The applicant is the proprietor of the trade mark "Cycle" represented in mustard, chocolate brown and deep brown colours, comprising of (i) the expression "cycle" in Gujarati inscription and (ii) the device of Cycle, in a distinctive fashion, unique to my identity in toto. The safety matches of the said trademark label are widely marketed in Gujarat. It is the continuous ans extensive use, the said Trademark label has acquired immense goodwill and valuable reputation for the goods sold thereunder. The applicant has been trading and manufacturing the product "SAFETY MATCHES' under the brand name Cycle since 2003. The Plaintiff has not filed any evidence to show the quantified profit gained by them by using the mark "Cycle" 4/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 for their complimentary product. The Plaintiff are not in commercial sale and restricted their mark "Cycle" in respect of safety matches to complimentary purpose only. In the absence of commercial participation of the Plaintiff in respect of their product "Safety Matches"
under the trade mark "Cycle" the Plaintiff cannot assert continuous cause of action. Hence prayed for vacating the order of injunction granted by this Court.
4. It is the case of the Respondent/Plaintiff that the Respondent have a reputed Trademark "Cycle" and the Cycle Logo with the device of CYCLE in respect of safety matches. The Plaintiff is a pioneer in the industry of fragrances i.e., incense sticks and other allied products including pooja oil and safety matches. It is only common knowledge that goods such as Agarbathies and safety matches have an inextricable connection and are therefore allied in nature. Further apart from being separately registered under various classes including in respect of Agarbathies and safety matches, the word mark CYCLE and CYCLE logo with the device of cycle is a house mark of the plaintiff and thus finds place in the all the products and all their packaging 5/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 labels emanating from them. The mark CYCLE and the CYLCE logo with the device of cycle is thus, exclusively used by and associated with the plaintiff and its products.
5. The mark cycle and cycle logo with the device of cycle has transcended the boundaries of goods and services offered through its statutory registration. Owning to its long, continuous and extensive use, the mark CYCLE and the CYCLE logo with the device of cycle has came to be recognised as a well known mark on the touch stone of the following criteria a. That the plaintiff has been using the trademark CYCLE AND THE CYCLE logo with the device of cycle for more than 6 decades continuously and uninterruptedly.
b. That the products of the plaintiff under the trademark CYCLE and the CYCLE logo with the device of cycle are available at every nook and corner of the country and has become a household name.
c. that the trademark CYCLE and the CYCLE logo with the device of cycle has been recognised by the 6/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 public to denote to connote the products and services of the plaintiff and has thus acquired a secondary meaning to refer only to the plaintiff's products and business.
d. that the plaintiff has taken active steps to statutorily protect the trademark and copyright in respect of the mark CYCLE and the CYCLE logo with the device of cycle and has obtained various registrations in its favour.
6. The Defendants attempted to file multiple applications at different jurisdictions of the Trademarks Registry to show their dogged penchant to monopolies the mark CYCLE and CYCLE logo with the device of cycle in respect of safety matches. The Defendants have knowledge of the Plaintiff's use and reputation. They are aware as to how the Plaintiff uses the mark CYCLE. The use of impugned mark with malafide intention to take undue advantage over the Plaintiff's prior established trademark CYCLE and the CYCLE logo. Hence, prayed for dismissal of the application and also prayed for injunction made absolute.
7/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
7. Learned counsel appearing for the Application in Application Nos.7501 and 7502 of 2008 vehemently contended that the Plaintiff product safety match with Cycle Brand is not being marketed at all. In fact the Plaintiff has given an affidavit of undertaking before the Trademark Registry to the effect that he had granted certificate "safety matches for complimentary purposes only". Without being in the market as a product, the plaintiff cannot claim monopoly as it would be trafficking of Trade Mark. The Plaintiff has knowledge of document using the mark as early as 2007 and sitting quiet. The conduct of the Plaintiff amounts to acquisance and suffers from the vice of delay and latches. In the said matchbox business Defendant is a prior user. The mark Cycle brand used by the Plaintiff only in respect to Agarbathi business whereas the Defendant is dealing with the Safety Matches. The trade mark for Safety Matches the Defendant is the prior user. The Plaintiff had never sold any Match Box. The defendants using the trade mark safety matches from 31.5.2003 and the safety matches sale would only in the State of Gujarat. The Application was opposed by the Plaintiff as early as 24.01.2007. The above makes it 8/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 clear that the Plaintiff has got knowledge that the Defendant using the mark Cycle from 31.5.2003.
8. The Plaintiff have reputation and goodwill only in respect of Agarbathies not regard to the Safety Matches. The Plaintiff themselves admitted that the safety matches with Trade mark cycle are being given as gift along with Three in One Agarbathies Packet. Based on the affidavit,the Registrar of Trade Mark passed an order dated 07.02.2011 restricting the applicant to use the safety matches for complimentary purpose only. No appeal whatsoever filed against that order. Therefore, it is very clear that Trade Mark is not for sale or commercial exploitation of safety matches which are only for complimentary purposes so has to enhance the marketability of the principal goods namely Agarbathies. The Plaintiff filed present suit and proceeded to plead as if registration has granted for cycle mark for commercial purposes. Therefore, it is his contention that the cycle is not a coined invented word and one cannot claim monopoly or exclusive right on the trade mark 'cycle'. In relation to safety matchbox there are already registered trade mark owners with the 9/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 mark cycle. When the plaintiff is not commercially selling the match boxes he cannot be allowed to enjoy monopoly. Only the persons who purchase the Agarbathies have the notice of the match box of the plaintiff. Safety matches were only complimentary use which would not have independent monetary value. Hence it is his contention that the interim order granted by this Court has to be vacated and O.A.Nos.470 and 471 of 2018 have to be dismissed.
9. In support of his contention he relied upon the following judgments:
1. Nandhini Deluxe v. Karnatraka Cooperative Milk Producers Federation Limited [(2018) 9 SCC 183]
2. N. Ranga Rao & Sons V. Amrutha Aromatics [2017 SCC Online Mad 26158]
3. N. Ranga Rao v. Shree Balaji Associates and Ors. [MANU/TN/3153/2018]
4. Synthetic Moulders v. Samperit Aktiergeselshaft [MANU/De/0175/1979] 10/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
10. Whereas the learned counsel appearing for the Respondent/Plaintiff submitted that the Defendant has adopted the Trade Mark Cycle dishonestly. Having failed to his attempt to get the Trademark registered at Ahmedabad he has filed application before Registrar of Trademark at Chennai and obtained Registration Certificate. The Plaintiff Trademark is well known and reputed trademark. The Defendant having adopted the mark Cycle and the Cycle Logo with the device of cycle in their safety matches have knowledge of the plaintiff's use and reputation, so that they are clearly aware as to how the Plaintiff uses the mark Cycle. While differentiating their use as "commercial" vis-a-vis the Plaintiff's "complimentary" use, the defendants have clearly shown knowledge and the malafide intention of usurping the goodwill and reputation of the mark Cycle, taking advantage of the plaintiff's complimentary use of the said mark. The Defendants have acted with malafide intention to take undue advantage over the plaintiff's prior established Trademark Cycle, which clearly proves the infringement on the part of the defendants. The Plaintiff are using the mark Cycle more than six 11/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 decades continuously and uninterruptedly. The Plaintiff's products with the mark Cycle and Cycle Logo are available at every nook and corner of the country and become household name. Adopting the similar mark dishonestly by the Defendant cannot be permitted. The Defendant continuous use of the trade marks Cycle with the device of Cycle in respect of their products is severely diluting the reputation and strength of the Plaintiff's well known mark Cycle. Hence, he prayed for dismissed the A.Nos.7501 and 7502 of 2018.
11. In support of his contention he relied upon the following judgments:
1. Dharampal Satyapal Limited vs. Suneel Kumar Rajput & Anr [2013 SCC Online Del 3343]
2. Corn Products Refining Co. vs. Shangrila Food Products Ltd., [(1960) 1 SCR 968 : AIR 1960 SC 142]
3. FDC Limited vs. Docsuggest Healthcare Services Private Ltd [(2017) 1 High Court Cases (Del) 16]
5. M/s.Power Contgrol Appliances and others vs. Sumeet Machines Pvt. Ltd., [(1994) 2 SCC 448] 12/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
6. Satyam Infoway Ltd., vs. Sippynet Solutions (P) Ltd., [(2004) 6 SCC 145]
4. M/s.Hindustan Pencils Pvt.Ltd., vs. India Stationery Products Co. & Another [ILR (1989) Delhi 115]
7. Midas Hygiene Industries (P) Ltd. and another vs. Sudhir Bhatia and Others [(2004) 3 SCC 90]
12. The Plaintiff has filed suit for infringement and also passing of goods. The Plaintiff is primarily in the business of Agarbathi and obtained Trademark Cycle which is the house mark of the Plaintiff. They have also obtained the trademark under Class 34 for Safety Matches. However, registration of the Plaintiff house mark of cycle for safety matches with limitation and only for the purpose of being given complimentary to Agarbathies. The defendant has started applying the deceptive symbol identical mark Cycle in the safety matches. Hence the suit. It is the undisputed fact that the Plaintiff has not less than 14 trademarks registration for Agarbathies and also for other 13/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 products in four different classes viz., Classes, Class-3, 35, 41 and 43. They have also obtained Registration of the Cycle mark by order dated 07.2.2011. From the above registration it is clearly indicated that the Plaintiff is the prior adopters of the mark Cycle. They have registered the trade mark under No.163539 as on 01.04.1954. They have also using the mark Cycle brand in respect of the Safety Matches. They are distributors of the same as complimentary only and not for commercial purposes. Accordingly the registration was restricted to the plaintiff's goods Safety Matches for complimentary purposes only. From the above, the document viz., Trademark Registration Certificate dated 7.2.2011and the order of the Registrar which makes it very clear that the cycle brand in respect of safety matches also registered in favour of the Plaintiff of course with rider that safety matches only for complimentary purpose.
13. Similarly on perusal of records it is very clear that the Defendant originally applied for Registration in the trademark at Ahmedabad, which was specifically refused by the Registering Authority at Ahmedabad, Gujarat on 10.01.2005. Thereafter, they 14/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 applied for Registration at Chennai Branch claiming to be a prior user from 31.5.2003. The above application was also opposed by the Plaintiff on 24.01.2007. It is to be noted that the mark Cycle Brand was registered in the year 1954 in favour of the Plaintiff. There cannot be any dispute in this regard. Besides, several other Registration also obtained by the Plaintiff in different classes. The mark Cycle Brand is in existence from 1954. Therefore, mere filing of an application in different Register Office claiming to be a prior user. Making such application in a different Register Office, one cannot prove that they are prior user will not help the Defendant. Whether or not the Defendant was prior user of the safety matches from the year 2003, which is the matter of evidence. All these facts can be gone only at the time of trial. But the facts remains that the Cycle Brand was registered in the name of the Plaintiff. For the Safety Matches also for complimentary purpose, cycle brand was registered. The Agarbathy trade of the Plaintiff is in existence from the year 1954. The documents available in the typed set of papers clearly indicate that the Plaintiff has reputation in his brand Cycle. The sale of Agarbathies depends upon the complimentary match box offered by the Plaintiff. 15/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 Market strategy adopted by the Plaintiff and they are successful in the field and the defendant having failed their attempt to register their mark at Ahmedabad, and made an attempt to ride on the reputation of the plaintiff. The mark has been registered mark which has been registered in the year 1954.
14. The sale of Agarbathies, incense sticks with complimentary match box are in fact have trade connection and Agarbathy sale is always go together with complimentary match box. Therefore, it cannot be said that since the mark Cycle brand in respect of the plaintiff business is restricted only for the complimentary purpose as far as the safety matches concerned. One can infringe the said mark. In fact, the complimentary safety matches and sale of Agarbathies are compliment to each other. No doubt in the judgment cited by the learned counsel for the Applicant in Nandhini Deluxe case (supra) the Honourable Apex Court held that though there are phonetic similarity in the word "Nandhini" the trade mark logo adopted by the two parties is altogether different and held that the visual appearance of the two marks is different and they even relate to different 16/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 products. It was difficult to imagine that an average man of ordinary intelligence would associate the goods of the appellant as that of the respondent. On facts the above judgment cannot be made applicable. Admittedly in this case Cycle Brand is registered mark of the plaintiff and registered in different classes and it has registered the mark in the year 1954. Besides, the mark cycle brand also recognised for safety matches for complimentary purposes. The Cycle brand Agarbathy and other products of the Plaintiff is in existence for many decades and also gained substantial reputation. Such being the position the defendant is adopting the same mark, advertising their own products, attempting to pass off their products as that of the Cycle Mark product, certainly amounts to infringement.
15. A Division Bench Judgment of this Court reported in N. Ranga Rao v. Amrutha Aromatics [2017 SCC online Madras 26158] it is held as follows:
"38. In the light of qualitative and quantitative discussions, this Court, keeping in mind a primordial fact that in an earlier Rectification Application filed by the 4th Respondent (M/s.Shalimar Agarbathi Company) had tacitly admitted its 'Trademark' as Cycle Brand Three in One and not THREE IN ONE per se which was accepted by the 5th Respondent/Appellate Board. Also that, numerous persons are 17/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 using THREE IN ONE FOUR IN ONE and TWO IN ONE to show that no one trader ought to be given any Exclusivity/Monopoly over the words/term THREE IN ONE, comes to an inescapable and irresistible conclusion that because of the Petitioner earlier conduct before the Appellate Board that it had no intention to employ the words THREE IN ONE and the same being purely descriptive of 'Incense Sticks' of three different fragrances that the Petitioner cannot claim any 'Exclusivity' or 'Monopoly' right over the words THREE IN ONE. Looking at from any angle, the conclusions arrived at by the 5th Respondent/Appellate Board to the effect that 'the Petitioner cannot be allowed to retract the assurance that would put a premium on dishonesty and that the words THREE IN ONE per se cannot be granted registration', do not suffer from any material irregularities or patent illegalities in the eye of Law. Consequently, the Writ Petition fails. "
16. The above facts also cannot be applied to the present case. The present dispute itself is with regard to the Cycle Brand which is the mark of the Plaintiff. In W.P.No.12531 of 2013 a Division Bench of this Court vide order dated 13.06.2018 has opined that the plaintiff herein has no right in respect of the Trademark "Cycle Brand" or device of 'Cycle' in respect of all the goods listed in alphabetic order under the NICE CLASSIFICATION, especially for products on which the 18/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 Brand has not been used till now. The above judgment also came to be passed on the ground that though the Petitioner has registered the Trade Mark under Class 21 the same was seen in the said class and held that the Petitioner cannot claim monopoly or exclusive right on the Trade Mark Cycle and his right on the ownership of the mark for goods other than Agarbathies is doubtful. In the above judgment the Divsion Bench is also held that the Plaintiff in the present suit has not established the well known trade mark. Challenging the above judgment the Plaintiff preferred SLP before the Honourable Supreme Court in SLP(C) No.26979 of 2018 and the same was dismissed by the Honourable Supreme Court. While dismissing the SLP the Honourable Apex Court has held as follows:
"The Special Leave Petition is dimissed, except that the finding of the Division Bench of the Petitioner not being a 'well known mark' within the meaning of Section 11(6) of the Trade Mark Act, 1999, will not bind in any other case as the Division Bench is not correct in stating that no evidence was produced in this behalf."19/23
http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018
17. Therefore, from the above also makes it clear that the Plaintiff mark has reputation. Such being the position when they acquired the mark and gained reputation, the defendant who deceptively adopted such mark, now cannot contend that he is the prior user of the mark as far as the Safety Matches is concerned. As already indicated whether or not he is the prior user is the matter of evidence. It cannot be decided at this stage. Once it shown that the defendant mark is identical and used in respect of similar goods and services the mark is similar to the registered mark of the Plaintiff and there is an identity or similarity of the goods or services covered by the trade mark, the plaintiff is certainly entitled to protect his mark. It is also to be noted that Section 29(4) of the Act makes it clear that when the registered trade mark is infringed by a person if uses the mark as identical or similar to the trade mark, but goods or services which are not similar, provided the registered Trade Mark has reputation in India and use of mark without due cause who take unfair advantage of distinctive character or repute of the registered trade mark. As already indicated the sale of Agarbathi is always go together with complimentary match box. The Plaintiff's mark is also in existence 20/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 from the year 1954, they have also reputation in the filed of Agarbathi business and allied products. If the defendant is allowed to ride on the reputation of the plaintiff, the same will lead to undue advantage to the Defendants. Therefore, this court is of the view that whether or not the plaintiff is the prior user can be gone only at the stage of trial and not at this stage. Accordingly, the applications filed to vacate the interim injunction is dismissed and the Interim Injunctions already passed by this Court are made absolute.
18. In the result the Applications Nos.7501 and 7502 of 2018 filed to vacate the Interim Injunction granted in O.A.Nos.470 and 471 of 2018 in C.S.No.294 of 2018 are dismissed and the Interim Injunctions passed by this Court in the above O.As dated 28.04.2018 are made absolute.
25.10.2019 Index : Yes / No Internet: Yes Speaking/Non-speaking order ggs 21/23 http://www.judis.nic.in A.Nos.7501 & 7502 of 2018 in C.S.No.294 of 2018 N. SATHISH KUMAR, J.
ggs common order in:
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