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[Cites 12, Cited by 0]

Madras High Court

K.Ramapandi vs Tamil Nadu Organics Industries on 28 October, 2015

Author: M.Sathyanarayanan

Bench: M.Sathyanarayanan

        

 
IN THE HIGH COURT OF JUDICATURE AT MADRAS 
Reserved on : 04.01.2016
			      Reopened on: 02.02.2016
             Delivered on :  10.02.2016               
CORAM:
THE HON'BLE MR. JUSTICE M.SATHYANARAYANAN
C.S.No.48 of 2005
and A.Nos.1403 of 2006, 1514 & 1515 of 2015,
and O.A.Nos.53 and 54 of 2005
K.Ramapandi
Trading as Vasanthi & Co.
and Tamil Nadu Oil Industries/trade
No.46, Appusali Street,
Saligrammam,
Chennai-600 046.						.. 	Plaintiff 
						Vs.

Tamil Nadu Organics Industries
No.1044 T.H.Road,
Thiruvottiyur,
Chennai-600 019.
Represented by its Proprietor,
Mr.Anandaraj,							..	Defendant
(Amended as per order dated 28.10.2015 in
	Appl.No.5659 of 2015)

Prayer in C.S.No.48 of 1994: Civil Suit filed under Order IV Rule 1 of Original Side Rules r/w. Order VII Rule 1 C.P.C. and Sections 134 & 135 of the Trade Marks Act, 1999 praying of a judgment and decree:
(a) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using the Plaintiff's Registered Trade Mark 'SUNOLA' or the crown device upon the goods or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually phonetically or deceptively similar to the plaintiff's Registered Trade Mark SUNOLA or in any manner infringing the plaintiff's Registered Trade Mark No.1068081 & 1082514 in class 29.  

(b) granting a permanent injunction, restraining the respondent, by themselves, their servants, agents, men, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale of all kinds of edible oil using the Trade Mark as shown in document No.2 (SUNOLA GOLD) or any other trade mark in the get up or colour scheme or the distribution of letters as displayed in the plaintiff's carton as shown in document No.1 (plaintiff's carton) SUNOLA PACKET or any other trade mark which is in any way deceptively similar to the plaintiff's trade mark and use the same in the course of oil business and pass off the defendant goods M.O.No.2 as the goods of the plaintiffs M.O.1 or enable other to pass off. 

(c) directing the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and  all other materials containing/bearing the Color Scheme and Get up in the SUNOLA or other deceptively similar Trade Mark in respect of Oil.

(d) for a preliminary decree in favour of the plaintiff's, directing the defendant to render an account of profits made by them by the use of the Color Scheme and Get up in the SUNOLA on the goods referred and for a final decree in favour of the plaintiff's for the amount of the profits found to have been made by the Defendants, after the defendants have rendered accounts;

(e) directing the defendant to pay to the plaintiff's the costs to the suit, and 

(f) pass such further or other order, as this Hon'ble Court  may deem fit and proper in the circumstances of the case.

	For Plaintiff		: 	Mrs.Gladys Daniel
					 for Mr.C.Daniel
					
	For Defendant	:	Mr.P.N.George Graham 
						for M/s.Devadasan Sagar

J U D G M E N T

The plaintiff, namely K.Ramapandi, carrying on the trade as Vasanthi Oil & Co., and Tamil Nadu Oil Industries/trade at Door No.46, Appusali Street, Saligrammam, Chennai-600 046, averred as follows:

1.1. The plaintiff is engaged in the business of packaging and selling of Refined Sunflower Oil and commenced its business in the year 2001 and would claim that the trade and public have received the product of the plaintiff under the Trade Mark 'SUNOLA' very well. The plaintiff has been doing extensive business in the region of Rs.2,71,86,048.39 since 2001, using the Trade Mark 'SUNOLA' and the repacking of the Sunflower Oil is done at their Unit in the above said address and in the premises in Vasanthi & Co., Door No.53, A.Balaraman Street, Adyar, Chennai-600 020.
1.2. The plaintiff would further aver that he has adopted an unique pouch for its refined sunflower oil for repacking and marketing under the Trade Mark 'SUNOLA' and in the pouch, the words, 'King of Oil' was written prominently on top of the pouch in black letters and below that is the picture of a crown in gold, with the picture of a sunflower in its center and at the base of the crown, the word 'SUNOLA' is written prominently and the descriptive words 'Refined Sunflower Oil' is written below and the said distinctive get up is exclusively associated with the plaintiff. The plaintiff would further state that popularity and demand of their product has been steadily increasing since inception of it's business in the year 2001 and he has also applied for registration of the Trade Mark 'SUNOLA' along with the above colour scheme and get up under Trade Mark Application Nos.1082514 and 1068081 and obtained registration of the Trade Mark with effect from 20.12.2001 and he has also obtained registration of the trademark with effect from 20.12.2001 in the name of the plaintiff's manufacturing concern and also it's marketing unit and thus the plaintiff has exclusive right over the Trade Mark 'SUNOLA' to the exclusion of all others and if any one uses the Trade Mark 'SUNOLA' or using the same colour scheme and get up without the plaintiff's consent, the same amounts to an infringement of the plaintiff's right, apart from constituting an offence punishable under the Trade Marks Act, 1999.
1.3. It is further averred by the plaintiff that during the year 2004, the plaintiff came across the defendant's goods, namely Refined Sunflower Oil available in the market in a deceptively similar colour scheme and get up and identical Trade Mark 'SUNOLA' with the suffix Gold and the defendant is using a yellow crown on its pouch having the picture of a Sunflower in the center and at the base of the crown, the word 'SUNOLA' is written prominently and in a smaller font, below the Trade Mark 'SUNOLA', the words Gold is written in a manner not noticeable and below the crown is the endorsement 'The Kitchen Queen' and below the endorsement, the words 'Sunflower Oil Guaranteed Against Adulteration' is available.
1.4. It is the specific case of the plaintiff that the defendant's pouch is a blatant imitation of the plaintiff's pouch and the defendant has adopted the Golden Crown and the picture of the Sunflower Oil and the defendant has also mischievously used the words 'The Kitchen Queen' being inspired by the plaintiff's endorsement 'King of Oils' and the colour scheme and get up adopted by the defendant is conscious with the intention of passing off its goods as that of the plaintiff, apart from infringement of its registered Trade Mark and the use of the Trade Mark 'SUNOLA GOLD' along with the plaintiff's Trade Mark 'SUNOLA' is bound to create confusion and deception in the market and the addition of the word 'Gold' to the distinctive Registered Trade Mark 'SUNOLA' is not sufficient to distinguish the plaintiff's goods from that of the defendant and the adoption of the crown to make it appear that there is some connection between the product of the plaintiff and the defendant.
1.5. The defendant, being a recent entrant, cannot be allowed to do so for the reason that the plaintiff has been carrying on the business using the Trade Mark 'SUNOLA' with respect of Sunflower Oil since 2001 and it is also the registered Trade Mark holder and the defendant, without express or implied consent, cannot use the said mark with the colour scheme obtained as that of the plaintiff product. It is also averred by the plaintiff that the defendant, by adopting and using the deceptively similar trade mark for products identical to the plaintiff, is successfully passing off it's goods and is calculated to cause confusion in the minds of members of the trade and public and the said acts of the defendant are dishonest and motivated, purely by malafide intention to trade upon and benefit from the reputation and goodwill enjoyed by the plaintiff and thereby, perpetrate fraud and deception on the public by passing off it's goods and hence, the defendant should not be allowed to malign and dilute the goodwill and reputation enjoyed by the plaintiff and hence, came forward to file the present Suit.
1.6. The plaintiff, pending disposal of the Suit, filed A.Nos.53 and 54 of 2005, praying for interim injunction in any manner infringing their Trade Mark as well as from passing of their product and this Court, vide exparte interim order dated 31.01.2005 has granted an order of interim injunction and the said order was extended until further orders by this Court, vide order dated 03.11.2010 and as on today, the said interim orders are in operation.
2. The defendant has filed a written statement, denying the averments made in the plaint and would contend that the word 'SUNOLA' is a very well trade name associated with Tamil Nadu Agro Industries Development Corporation Limited, vide Trade Mark No.331858. The defendant had applied for registration of the Trade Mark 'SUNOLA GOLD' and registration was granted on 26.02.2002 in Reg.No.115838 and it has also obtained certificate of authorization under the provisions of Agricultural Produce (Gardening and Marketing) Act in Sl.No.A/1 No.002503 dated 03.11.2003 and it has also registered the same under the provisions of Tamil Nadu Sales Tax Act. The defendant would further state that it's turnover for the year 2003 and 2004 was Rs.1.27 Crores and for the years 2004 and 2005 was Rs.2.4 crores and the registration of the Trade Mark 'SUNOLA GOLD' was on the basis of the understanding that the Tamil Nadu Agro Industries Corporation Limited was not interested in the Trade Mark. It is further averred by the defendant that the plaintiff has filed ORA/77/2005/TM/CH/4174 before the Intellectual Property Appellate Board, Chennai [ in short 'IPAB'] to remove the Trade Mark No.331858 registered in the name of 'SUNOLA' by the Tamil Nadu Agro Industries Corporation Limited and it was opposed by the said Corporation by filing the counter affidavit and the IPAB, after taking note of the rival submissions, has dismissed the application of the plaintiff, vide order dated 04.08.2006 and the said fact has been totally suppressed by the plaintiff. The defendant would further state that the plaintiff would not have commenced it's operations on 20.12.2001 and their application for registration is fraudulent and even for the sake of arguments that the Tamil Nadu Agro Industries Corporation Limited did not apply for renewal, the plaintiff would not have submitted the application till 2003 and hence, prayed for dismissal of the Suit.
3. The following issues are framed for trial:
(i) Whether the trademark 'SUNOLA GOLD' is deceptively similar to the registered trademark 'SUNOLA' of the plaintiff ?
(ii) Whether the colour scheme, get up and layout of the defendant's pouch is deceptively similar to the plaintiff's registered trademark ?
(iii) Whether the suit filed by the plaintiff is maintainable when the Trademark 'SUNOLA' is the property of Tamil Nadu Agro Industries Development Corporation Limited?
(iv) Whether the defendant is passing off its goods for the plaintiff's goods by using a deceptively similar pictorial and wood mark?
(v) Whether the plaintiff is entitled to the consequential reliefs of rendition of account and surrender of blocks, dyes etc.
(vi) Whether the plaintiff is entitled to the costs of the Suit.

4. The learned counsel appearing for the plaintiff submitted that the plaintiff has applied for registration of the Trade Mark 'SUNOLA' along with the colour scheme and get up which is more fully described in the plaint under Trade Mark Application Nos.1082514 and 1068081 and it was also registered in Reg.No.1082514 in respect of the Trade Mark 'The King of Oils' and the Word Mark Sunola Refined Sunflower Oil' with effect from 22.02.2002 and the mark 'The King of Oils', vide Registration No.1068081, marked as Ex.P3 series, with effect from 20.12.2001 for a period of 10 years and as such, the plaintiff is having exclusive right over the Trade Mark 'SUNOLA' for exclusive use by others and the defendants use the said Trade Mark under the same or similar colour scheme and get up without the consent of the plaintiff and the said act amount to infringement of the right of the plaintiff as Registered Trade Mark Holder. The learned counsel appearing for the plaintiff has drawn the attention of this Court to Exs.P2 and P4 and would submit that Ex.P2 series are used by the plaintiff and Ex.P4 series are used by the defendant and a perusal of the same would clearly reveal that the defendant's pouch is an imitation of the plaintiff's pouch and that the defendants had adopted golden crown and also mischievously used the words 'The Kitchen Queen' being inspired by the plaintiff's endorsement 'Kind of Oils' and the colour scheme and get up adopted by the defendant is conscious with the intention of passing off its goods as that of the plaintiff, apart from infringement of its registered Trade Mark. It is further contended by the learned counsel appearing for the plaintiff that the defendant is deceptively using similar Trade Mark 'SUNOLA' with insignificant addition gold to distinguish its goods in the market and the use of the Trade Mark 'SUNOLA GOLD' along with the plaintiff's Trade Mark 'SUNOLA' is bound to create confusion and deception in the market and the defendant has also adopted the Crown to make it appear that there is some connection between the plaintiff and the defendant manufacturers when there is no such connection and the above said acts of the defendant is actuated with dishonest and malafide intention by passing off the product as that of the plaintiff.

5. Insofar as the stand of the defendant that the Tamil Nadu Agro Industries Corporation Limited is the inventor/first user of the word 'SUNOLA', attention of this Court was drawn to Ex.P8-a communication from the Trade Mark Registry of the Government of India dated 04.12.2002 addressed to Mr.D.Vengatakrishnan, wherein it has been stated that the Trade Mark Application No.331858 in Class 29 (Tamil Nadu Agro Industries Development Corporation Limited) filed by him is abandoned according to the record diary of Trade Mark Registry and therefore, there is no impediment on the part of the plaintiff to use the Trade Mark 'SUNOLA' and it has also been registered under Ex.P3 series. The learned counsel appearing for the plaintiff would submit that the defendant was using the pouch with the words 'Whiiter Gold  Refined Sunflower Oil' and on becoming aware of the plaintiff product, started using the pouch with similar get up and colour scheme and it would clearly exhibit dishonest and malafide intention on the part of the defendant and the plaintiff is having no objection in using Ex.P6/pouch by the defendant. The plaintiff, in order to substantiate the fact that it is using the pouch of the colour scheme and get up, marked Ex.P9 series and invoices issued by pharmacist manufacturers and it is the submission of the learned counsel appearing for the plaintiff that the said documents are from January 2002, which is much prior to the adoption of the similar colour scheme and get up by the defendant.

6. It is also the submission of the learned counsel appearing for the plaintiff that the plaintiff has filed an application in ORA/61/2008/TM/CH/4449 before the IPAB, Chennai-18 for removal of the Trade Mark 'SUNOLA' registered under No.1178358 in Class 29 in respect of refined edible oils under the provisions of the Trade Marks Act, 1999 by the defendant and the IPAB, vide order dated 26.05.2010, has remanded the matter to the Registrar of Trade Marks for re-advertisement and the application filed by the defendant would be put back to the stage before acceptance and the Registrar of Trade Mark has to be decide as to whether the application be accepted or not after hearing the applicant/respondent and thereafter the matter be re-advertised if permissible for effective opposition and in the light of the fact that registration of the Trade Mark is no longer in force, the defendant cannot use the Trade Mark 'SUNOLA' for its products. It is the further submission of the learned counsel appearing for the plaintiff that though the defendant took an application to cancel the defendant's Trade Mark, it is still pending and as on date, the plaintiff, being registered Trade Mark Holder, is entitled to derive the benefit of the said registration and since the defendant made a willful imitation of the plaintiff's get up in the pouch used for packing of Sunflower Oil and on account of the said infringement/passing off, it also earned very good income and profits and as such, the defendant shall render true account of the profits and shall surrender all packing and connected materials and hence, prays for decreeing of the Suit with costs.

7. Per contra, learned counsel appearing for the defendant would submit that admittedly the plaintiff has approached the IPAB for removal of the name 'SUNOLA' registered in the name of Tamil Nadu Agro Industries Corporation Limited from the Trade Mark Registry and the Tribunal has passed an order dated 04.08.2006 under Ex.D20, wherein it was held that the first respondent, namely Tamil Nadu Agro Industries Development Corporation Limited has not given up the use of the Trade Mark and the mark was in use at least till March, 2002 and if that be so, the requirement of statutory period for filing rectification application provided under clause (b) of sub-section (1) of Section 47 of the Trade Marks Act, 1999 is not met as the application for rectification is filed on 17.10.2005 and the applicant/plaintiff has miserably failed to prove non-use of the trade mark for five years and three months on the date of filing of the rectification application and hence, rejected the said application and the said fact has been totally suppressed by the plaintiff and as a consequence, the Tamil Nadu Agro Industries Corporation Limited continues to be the Registered Trade Mark holder of the Trade Mark 'SUNOLA'. It is the further submission of the learned counsel appearing for the defendant that necessary averments and evidence are lacking and confusion has also been created in the cause title of the plaintiff, as he described himself as K.Ramapandi, Trading as Vasanthi & Co. and Tamil Nadu Oil Industries/trade and invited the attention of this Court to the evidence of PW1 and would submit that PW1 has not aware of the goods that are going in the above said concerns and since the plaintiff has failed to come out with a clear case as to the goods which are being marketed by the said firms, he/it is not entitled to any relief.

8. Insofar as the contention put forward by the plaintiff that the defendant, with a fraudulent intention and malafide motive, had adopted similar colour scheme and get up and the registered Trade Mark of the plaintiff, it is contended that a comparison of Ex.P2 series and Ex.P4 series would disclose that the defendant is not using similar design/get up as that of the plaintiff and their pouch and the pouch of the defendant under Ex.P4 is clearly distinguishable with regard to the use of crown and therefore, a common man would not be mislead by the same. It is further contended by the learned counsel appearing for the defendant that admittedly the Trade Mark 'SUNOLA' has been registered in the name of Tamil Nadu Agro Industries Corporation Ltd. and dehors the registration of the plaintiff Trade Mark No.1082514 and 1068081, the plaintiff cannot claim that it is entitled to have exclusive use of the said word as there is no abandonment on the part of Tamil Nadu Agro Industries Corporation Ltd. with regard to use of the Trade Mark 'SUNOLA'. In sum and substance, the contention put forward by the defendant is that their Trade Mark does not contain the word 'King of Oils' and their trade mark is entirely different and the wording mentioning 'Kitchen Queen' is entirely different from 'King of Oils' used by the plaintiff and there are distinct factors between the pouch used by the plaintiff and the defendant and as such, buyers will not be mislead by the same and as a consequence, the plaintiff is not entitled to any relief. Insofar as the rendition of accounts and surrender of packing materials, dyes etc., the learned counsel appearing for the defendant would submit that the plaintiff has failed to produce statement of accounts with regard to profits earned on account of alleged infringement on the part of the defendant and in the absence of tenable materials in the form of evidence, the plaintiff has failed to probablise and substantiate it's case and as such, he is not entitled to any relief and prays for dismissal of the Suit with exemplary costs.

9. In response to the said submission, the learned counsel appearing for the plaintiff would submit that though the Tamil Nadu Agro Industries Corporation Limited is the Registered Trade Mark Holder 'SUNOLA', the fact remains that the colour scheme and get up used by the defendant is similar to that of the plaintiff and the plaintiff, being the Registered Trade Mark Holder, is entitled to have statutory protection and their application under Ex.D20 was dismissed by the IPAB for the reason that the applicant has miserably failed to prove non-use of trade mark, for 5 years and 3 months on the date of filing the rectification application, by the respondent company and at this point of time, the said period has already been expired and still Tamil Nadu Agro Industries Corporation Limited is not manufacturing or marketing the product under the Trade Mark 'SUNOLA' and there is a clear abandonment made out and on account of the said fact, the plaintiff, being the Registered Trade Mark Holder, is entitled to use the word 'SUNOLA', and since the defendant is continuously using the same, it should be restrained from doing so and prayed for decreeing of the Suit with exemplary costs.

10. This Court has carefully considered the rival submissions and also perused the pleadings, oral and documentary evidence.

Issue Nos.(i) and (ii)

11. The Marketing Officer of the plaintiff company, namely Mr.K.Ramapandi was examined was PW1 and through him Exs.P1 to P13 came to be marked. In the cross examination, PW1 would depose that he is working in Tamil Nadu Oil Trade/Industries at No.46, Appusali Street, Saligrammam, Chennai-46 and the units are being sold at Vasanthi & Co., No.53-A, Balaraman Street, Adyar, Chennai-60020 and the said concern is purchasing oil from Tamil Nadu Oil Industries and he is the sole proprietor of Tamil Nadu Oil Industries trade and there is separate balance sheet for Vasanthi & Co., and Tamil Nadu Oil Trade Industries and he do not know why two proprietary concerns are run by one and the same concern and the present case is being filed for M/s.Tamil Nadu Oil Industries/Trade. PW1 would further depose that in Ex.P1, the name has been mentioned as Tamil Nadu Oil Industries New SUNOLA and he do not know about the registration of the Trade Mark in the name of 'SUNOLA' by a company owned by Tamil Nadu Government and also do not know from which date, the plaintiff company packed Sunflower Oil in the name of 'New SUNOLA' and apart from 'SUNOLA' trademark, one other trade mark registered in the name of plaintiff is 'GOLD Million'. PW1 would further depose that he do not know whether the plaintiff has obtained permission from the Tamil Nadu Agro Industries Corporation Limited for using the trade mark 'SUNOLA' and he do not know about the documents, marked as Ex.P10 and P11. PW1 also made a crucial admission that the trade mark 'NEW SUNOLA' is not used by the plaintiff and he do not know whether any document has been filed to show the turnover of Rs.2,71,86,048/- and do not know about as to how much of business were carried on by the plaintiff from the year 2001 onwards and he came to know that defendant company is doing business only in packing the oil and it is doing so in the name of 'Whiiter Gold Sunola' and he knows that the defendant company is selling SUNOLA oil from the year 2004. PW1 would further depose that in Ex.P4, in the name 'SUNOLA', the English letter 'O' is in round shape and the trade mark used by the plaintiff is different and in Ex.P2-pouch, the letter 'O' appearing in the name 'New SUNOLA' is not round in shape and denied the suggestion that the trade mark 'SUNOLA' was registered in the name of Tamil Nadu Agro Industries Corporation Limited and they illegally using the same name.

12. The proprietor of the defendant Company, namely Thiru.Anandraj, examined himself as DW1 and through him, Exs.D1 to D25 were marked. In the cross examination, he would depose that the defendant's concern use to deal with packing and selling of cooking Oils, such as Sunflower Oil, Edible Oil, Gingily Oil from the year 2002 and Sunflower Oil was being sold in the name of 'SUNOLA Gold' and 'Whiter Gold' and started selling oil in the name of Sri Murugan Traders in the year 1996 and subsequently changed the said business in the year 2002 in the name of Tamil Nadu Organics Industries and started selling Sunflower Oil in the name of 'Gold Whiter' in the year 1996. DW1 would further depose that Kaleeswari Refineries filed a Suit against the defendant for infringement of the trade mark 'Gold Winner' in the year 2002-2003 and after compromise, the defendant has changed the trade mark as 'Whiter Gold' for selling 'Sunflower Oil' and since the business is not viable, he discontinued to sell Oil in the name of 'Whiter Gold' and it was not profitable. However, in the later portion of the deposition, DW1 made a contradictory submission that he earned profit by selling Sunflower Oil in the name of 'Whiter Gold' and though the business was going very well in the name of 'Whiter Gold' he adopted the brand name of 'SUNOLA Gold' and deny the suggestion that he has not gained profit by selling Sunflower Oil in the name of 'Whiter Gold'.

13. DW1 would also depose that he was selling oil in plastic can as well as tin packing in the name of 'SUNOLA Gold' from the year 2002 onwards. Ex.D2 was shown to by DW1, wherein he would depose that he got it from old 5 litre can sold by Tamil Nadu Agro Industries Corporation and there is no date of manufacturing mentioned in the said label and no price or tax rate also mentioned and he adds that it got erased due to spillage of oil. DW1 would further depose that labels were photographed by him for the purpose of the Suit and the company names printed below every label are printed on his instructions only and registered in Trade Mark No.331858 printed below the first label in Ex.D7 is added at his instructions. DW1 would further depose that Ex.D5 is plaintiff label and Ex.D4 is his label. Insofar as registration of Trade Mark is concerned, IPAB has cancelled the registration and placed the matter before the Trade Mark Registry and he do not know whether registration of Trade Mark is in force or not and he has not preferred any appeal, challenging the order passed by IPAB. DW1 would further depose that as on date, he is selling under the Trade Mark 'SUNOLA GOLD' and since 2005 he is not using the said Trade Mark because the injunction order granted by the Court is in force and denied the suggestion that he has falsely stated that his turnover during the year 2003-2004 is Rs.1.3 Crores and admitted that the name 'SUNOLA' is not mentioned in Exs.D8, D9 and D10/invoices and denied the suggestion that after the plaintiff commenced business in the Trade Mark 'New SUNOLA', he had adopted the deceptively similar trade mark 'SUNOLA GOLD'. DW1 was subsequently recalled and marked Ex.P26 series and was cross examined by the learned counsel appearing for the plaintiff and he pleaded ignorance as to the Trade Mark 'SUNOLA' as well as the label mark and he do not know whether the mark mentioned in Ex.D26 series is label mark or a word mark.

14. In Pionotist case [1906 (23) RPC 774] it has been held as follows:

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. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case. The above said judgment was considered by the Hon'ble Supreme Court of India in Amritdhara v. Lakshmandhara [AIR 1963 SC 440] and Cadila Health Care Ltd., v. Cadila Pharmaceuticals Ltd. [AIR 2001 SC 1952].

15. It is also a well settled position of law as enunciated by the Hon'ble Supreme Court of India in National Sewing Thread Co. Ltd. Chidambaram v. James Chadwick and Bros. Ltd., [AIR 1953 SC 357] that the Court must assess each matter from the position of a purchaser who must be looked upon as an average man of ordinary intelligence; for it is such a purchaser whose reaction to a particular trade mark has to be considered and what association he would form, by looking at the trade mark and in what respect he would connect the mark in the goods he would be purchasing.

16. In Cadila Health Care case (cited supra), which relates to the issue of deceptive similarity in the context of pharmaceuticals preparations and the Hon'ble Supreme Court of India has laid down the following factors, while deciding the issue of deceptive similarity, which are as follows:

(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 marks;
b) The degree of resemblance 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, or 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 orders for the goods; and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

17. In Corn Products Refining Co. v. Shangrila Food Products Ltd. [AIR 1960 SC 142], the Hon'ble Supreme Court of India held that an applicant can assert the presence of a number of marks having one or more common features in the trade "he has to prove that these marks had acquired a reputation by user in the market"; the onus of establishing this lies on him who asserts the existence of such other mark. The judgment in Corn Products emphasizes that the presence of a mark in the Register does not prove its use and it is quite possible that the mark may have been registered but not used.

18. This Court, keeping in mind the above said provisions enunciated by the Hon'ble Supreme Court of India in the above cited judgment, has carefully scrutinized the oral and documentary evidence.

19. The plaintiff, under Ex.P3, has got registration of the Trade Mark 'Refined Sunflower Oil' and the work mark 'The King of Oils Sunola' vide Reg.No.1082514 with the Trading as 'A Tamil Nadu Edible Oil Trade', No.46, Appa Salai Street, Saligrammam, Chennai-600 093 and also got registration of the Trade Mark 'Sunola Refined (Label) and the word mark 'The King of Oils', vide Reg.No.1068081 with the Trading as 'Vasanthi & Co.' in the very same address. Ex.P2 is the label/print out of the pouch of the plaintiff and Ex.P4 is the print out/label of the pouch of the defendant. In Ex.P2, the word 'The King of Oils', printed in blue, appears in the top and below that a crown and in the middle, the picture of Sunflower is found and below that the word 'SUNOLA' is printed in white and below the crown, in between two green lines, the words 'Refined Sunflower Oil' is printed in red colour and below that the words 'Healthiest Family ! Happiest Family !' is printed and below that in a oval shape, the words '1l' is printed.

20. In the defendant's pouch, marked as Ex.P4, on the top, the pictures of small sunflowers are printed with green shades on the top and in the flower, it is yellow and red shaded and below that crown is printed and on the top of the crown, heart-in shape is printed in red colour and in the bottom of the crown, the words 'SUNOLA Gold' is printed with red background and below the crown, the words 'The Kitchen Queen' is printed in red in a medium size font and below that the words 'Refined Sunflower Oil Guaranteed Against Adulteration' are printed in blue colour and below that once again the pictures of sunflowers as appeared in the top are printed.

21. It is to be noted at this juncture that any person with health conscious used to purchase Sunflower Oil on the pretext that cholesterol will not be accumulated in the blood vessel and Sunflower Oil may be purchased by residents of the City - both illiterates and literates. Therefore, approach of the Court should be from the point of view of the average conscious and recollection as per the various decisions of the Hon'ble Supreme Court of India.

22. In Ex.D19, the Tamil Nadu Agro Industries Corporation Limited was issued with registration of the Trade Mark 'Device' and Word Mark 'SUNOLA BRAND' with Goods Description 'SUNFLOWER OIL (EDIBLE)' in Clause 29. The plaintiff approached the IPAB by filing an application in ORA/77/2005/TM/CH under Sections 47/57/125 of the Trade Marks Act, 1999 for removal of the trade mark 'SUNOLA' from the Registry of Trade Mark, which is registered in favour of Tamil Nadu Agro Industries Corporation Limited, who has been arrayed as the first respondent in the said application. IPAB, after hot contest, has held that the facts placed before them are adequate to prove that the respondent, namely Tamil Nadu Agro Industries Corporation Limited, Chennai, has not given up the use of the trade mark and the mark was in use at least till March 2002 and if that be so, the requirement of statutory period for filing rectification application provided under Clause (b) of sub-section (1) of Section 47 of the Trade Marks Act, 1999 is not met as the application for rectification was filed on 17.10.2005 and since the applicant/plaintiff has miserably failed to prove non-use of trade mark for five years and three months, it deserves dismissal and accordingly dismissed the same and no appeal has been filed challenging the legality of the said order.

23.The defendant herein filed an application in ORA/11&12/2005/TM/CH and in that application, the plaintiff, who has been shown as the second respondent, has filed a memo stating that as per the undertaking given on 02.01.2013 before the IPAB, they have filed TM-34 before the Trade Mark Registry at Chennai, seeking amendment of the mark registered under Nos.1068081 & 1082514 and the same was taken on record and as per annexure to the said memo, the plaintiff may request for amendment in pursuant to the undertaking given by him before the IPAB. In Ex.D7, the defendant has given a comparison of the carton of the pouch of the Tamil Nadu Agro Industries Corporation Ltd. Chennai and cartons used by the plaintiff as well as by him and DW1 had admitted that the Trade Mark Regd.No.331858 of the Tamil Nadu Agro Industries Corporation Ltd., Chennai has been printed as per his request. It is the submission of the learned counsel appearing for the plaintiff that though IPAB has dismissed the application filed by the plaintiff in ORA/77/2005/TM/CH on technical ground of non-use of the trade mark for 5 years and 3 months, the fact remains that even as on date, the Tamil Nadu Agro Industries Corporation is not using the said Trade Mark and drawn the attention of this Court to Ex.P8, wherein the Trade Mark Registry of the Government of India has given a letter dated 04.12.2002 stating that the Trade Mark Application No.331858 in Clause No.29 has been abandoned according to the record to the diary of Trade Mark Registry. However, the above cited order of IPAB, which came to be passed nearly 8 years thereafter, have not disclosed the fact of abandonment/non-use of the Trade Mark by the Tamil Nadu Agro Industries Corporation Limited.

24. Side by side comparison of Ex.P2 and Ex.P4 would clearly reveal that the carton of the defendant is not deceptively similar to that of the carton of the plaintiff and the picture of the crown found in Ex.P2 and Ex.P4 are entirely different, except use of the words 'SUNOLA'.

25. Incidental question arise for consideration is whether the defendant is entitled to use the word 'SUNOLA' on the pouch used by it.?

26. The defendant obtained the Trade Mark 'SUNOLA' under No.1178358 in Class 29 in respect of 'Refined Edible Oil' under the provisions of the Trade Marks Act, 1999 and the plaintiff has moved the IPAB by filing an application in O.A.No.61/2008/TM/CH/4449 for removal of the said trade mark, registered in favour of the defendant herein. IPAB, after considering the rival submissions, has found that if an advertisement gives an incomplete information in respect of the particulars of the trade mark advertised or gives an incorrect information regarding any material particular a prospective opponent is deprived of the opportunity of getting full information regarding the trade mark and also is deprived of the opportunity of filing an effective opposition and therefore, an incorrect advertisement which amounted to misrepresentation is required to be cancelled. IPAB also placed reliance upon the decision in Ashoka Dresses v. Bonn's Shirts and another [2000 PTC 161] and found that the above said case is squarely applicable to the facts of the case and therefore, held that registration granted in favour of the defendant in No.1178358 in Class 29 ought to be cancelled and accordingly, remanded the matter to the Registrar of Trade Marks for re-advertisement and further held that the application filed by the defendant for registration of the Trade Mark 'SUNOLA' will be put back to the stage before acceptance and it is to be decided as to whether the application be accepted or not after hearing the applicant/respondent and the matter then be re-advertised if permissible for effective opposition.

27. Attention of DW1 was also invited to the said order, marked as Ex.P11/Ex.D23, and he answered that he do not know whether registration of the Trade Mark of the defendant is in force or not and further pleaded ignorance as to the Trade Mark 'SUNOLA Gold' in No.1178358 is in force or not as on date and would further admit that no appeal has been preferred, challenging the legality of the said order passed in Ex.P11/Ex.D23.

28. Though this Court holds that Trade Mark 'SUNOLA Gold' as well as the colour scheme and get up is not deceptively similar to that of plaintiff's registered trade mark, this Court is of the view that by virtue of registration certificates, marked as Ex.P3 series, the defendant cannot use the word 'SUNOLA'.

29. Section 28(1) of the Trade Marks Act, 1999 confers powers upon the registered proprietor of the trade mark,

(i) The exclusive right to the use of the trade mark,

(ii) In relation to the goods or services in respect of which the mark is registered and

(iii) To obtain relief in respect of infringement in the manner provided under the Act.

Section 29(1) of the said Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way off permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

30. No doubt, Tamil Nadu Agro Industries Corporation Ltd., has obtained the registration of the Trade Mark 'SUNOLA' brand and Word Mark 'Double Refined Sunflower Oil' at much earlier point of time to that of plaintiff's registration. However, the fact remains that with regard to alleged infringement of the word 'SUNOLA Gold', the Tamil Nadu Agro Industries Corporation Ltd. did not approach any forum restraining the plaintiff from using the word 'SUNOLA'. It is also to be noted and already pointed out, the registration obtained by the defendant in Trade Mark No.1178358 in Class 29 was set aside under Ex.P11/Ex.D23 by IPAB and remanded to the Trade Mark Registry for fresh adjudication and it is yet to take place and it is not known to DW1, who deposed on behalf of the defendant. Therefore, it shall be presumed that the defendant is not having the benefit of user of trade mark 'SUNOLA'.

31. The attempt made by the plaintiff for removal of the Trade Mark 'SUNOLA' registered in the name of Tamil Nadu Agro Industries Corporation Ltd., came to be rejected under Ex.D20 on technical ground of its failure to prove the non-use of the Trade Mark for 5 years and 3 months. The learned counsel appearing for the defendant laid much stress on the memo filed by the plaintiff in A.No.ORA/11&12/2005/TM/CH, marked as Ex.D26 series, wherein the plaintiff has prayed for amendment. In the request filed by the plaintiff in TM-33 of the Trade Marks Act, 1999, wherein the plaintiff has deleted the word 'SUNOLA' printed below the crown and the said fact has not been disclosed either in the plaint or in oral evidence of PW1.

32. Ex.D25 is the print out copy of the Trade Mark Certificate and it would disclose that apart from the plaintiff, defendant as well as Tamil Nadu Agro Industries Corporation, M/s.Sunraja Oil Industries Pvt. Ltd., Puliangadu, Erode District is also using the word 'SUNOLA' along with the word 'SAKTHI'.

33. In view of the fact that the registration granted in favour of the defendant has been set aside by IPAB under Ex.P11/Ex.D23 coupled with the fact that the plaintiff himself has filed a memo before IPAB as well as application in TN-33 of the Trade Marks Act, 1999, deleting the word 'SUNOLA' and the further fact that the plaintiff has failed to substantiate the pleadings with regard to the non-use of the mark 'SUNOLA' on the part of the Tamil Nagu Agro Industries Corporation. It is to be noted at this juncture that in the light of findings given in paras 30 and 31, both the plaintiff as well as the defendant may not entitled to use the word 'SUNOLA' in the pouch or the carton for sale of Sunflower Oil.

34. Therefore, this Court holds Issue Nos.1 and 2 against the plaintiff, but at the same time, restrain both the plaintiff as well as the defendant from using the word 'SUNOLA' in their pouch or carton for selling Sunflower Oil in the light of the discussions made above.

Issue No.4

35. In the light of the findings given in respect of Issue Nos.1 and 2, it cannot be said that the defendant is passing off its goods for the plaintiff's goods by using a deceptively similar pictorial and word mark and therefore, Issue No.4 is answered in negative against the plaintiff.

Issue No.3

36. This Court, while considering Issue Nos.1 and 2, has gone into the registration obtained by Tamil Nadu Agro Industries Corporation Ltd., and also taking into consideration the order passed by IPAB under Ex.D20, held that in the absence of any proof as to the non-use/abandonment of the Trade Mark 'SUNOLA' on the part of Tamil Nadu Agro Industries Corporation Ltd., both the plaintiff and the defendant cannot use the word 'SUNOLA' in their pouch/carton for packing and selling the Sunflower Oil. Therefore, Issue No.3 is answered in negative against the plaintiff.

Issue No.5

37. The plaintiff did not mark any account book/Balance Sheet to probablise and substantiate the fact that on account of the alleged deceptive use of registered Trade Mark 'SUNOLA' as well as the Colour Scheme and Get Up adopted by the defendant is similar to that of the plaintiff's registered Trade Mark, this Court is not in a position to hold that it is entitled to consequential reliefs of rendition of account and surrender of blocks, dyes etc. Therefore, Issue No.5 is answered in negative against the plaintiff.

Issue No.6

38. In the light of the findings given above, the plaintiff is entitled to the limited relief of restraining the defendant from using the trademark 'SUNOLA'. But at the same time, in the light of the discussions made with regard to incidental issue/question, on which necessary materials in the form of oral and documentary evidence are available, both the plaintiff and the defendant are not entitled to use the word 'SUNOLA'. This Court has also pointed out that the plaintiff has not disclosed the material fact of getting adverse order under Ex.D20 as well as amendment of the mark registered under Ex.P3 in the plaint as well as in the oral evidence. Therefore, it is not entitled to get the primary relief.

39. In the result, the Suit is partly decreed and there shall be judgment and decree for permanent injunction restraining the defendant from using the Trademark 'SUNOLA'. The plaintiff is also restrained from using the Trademark 'SUNOLA'. In respect of other reliefs, the Suit is dismissed. However, in the circumstances of the case, there shall be no order as to costs. Consequently, connected miscellaneous applications are closed.

10.02.2016 jvm Index : Yes/No Internet : Yes/No List of Witnesses:

PW1 : Mr.K.Rameshkumar DW1 : Mr.Anandraj List of Exhibits :
Exhibits Date Description of Documents Ex.P1 23.03.2011 The original authorisation letter Ex.P2
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The original pouch used for marketing SUNOLA OIL Ex.P3 series

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The photocopy of the registration certificate Nos.1082514 & 1068081 Ex.P4

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The original pouch used by the defendant Ex.P5 21.01.2005 The original bill of purchase of the defendant product Ex.P6

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The original earlier pouch used by the defendant with the trademark Whiter Gold and label Ex.P7 17.04.2003 The original examination report Ex.P8 04.12.2002 The photocopy of letter by Trademark Registry Ex.P9

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The original invoices Ex.P10 16.09.1979 The copy of Trade Mark journal No.727 Page No.780 Ex.P11 26.05.2010 The original order in ORA No.61/2008 Ex.P12

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The original plaintiff's pouch SUNOLA Ex.P13

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The original defendant's pouch SUNOLA Exhibits Date Description of Documents Ex.D1

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The original label to Tamil Nadu Agro Industries to be affixed in 1 litres bottle Ex.D2

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The original label to Tamil Nadu Agro Industries to be affixed in 5 litres bottle Ex.D3

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The original cartoon in the name of Gold Million of the plaintiff Ex.D4

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The original cartoon of Tamil Nadu Agro Industries Corporation Ex.D5

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The original cartoon in the name of New Sunola of the plaintiff Ex.D6

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The original cartoon in the name of New Sunola Gold of the defendant Ex.D7

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The copy of the cartoon of the plaintiff, defendant and others for comparison Ex.D8 24.04.2003 The original invoice for purchase of packing materials Ex.D9 02.06.2003 The original invoice for purchase of plastic film by the defendant Ex.D10 23.10.2003 The original invoices of purchase of film roll Ex.D11 07.03.1992 The original publication of caution notice Ex.D12 26.02.2003 The office copy of the application by the defendant for registration of trademark Sunola Gold Ex.D13 31.05.2003 The original legal notice Ex.D14 27.02.2002 The copy of the cash bill issued by the plaintiff (2 Nos.) Ex.D15 16.09.1979 The copy of the trademark journal Ex.D16 20.01.2005 The copy of registration certificate Ex.D17 20.01.2005 The copy of the registration certificate Ex.D18 26.12.2002 The copy of the registration certificate of Whiter Gold Ex.D19 09.06.2006 The copy of the registration certificate issued in the name of Sunola Ex.D20 04.08.2006 The copy of the order passed in ORA/77/2005/TM/CH Ex.D21 20.06.2007 The original order passed by Asst. Registrar of Trade Mark Ex.D22

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The copy of the certificate for registration of Sunola Gold in favour of the defendant Ex.D23 26.05.2010 The copy of the order passed in ORA/61/2008/TM/CH Ex.D24 20.02.2002 The copy of the letter Ex.D25 30.09.2005 The print out copy of the trade mark search report Ex.D26 05.02.2013 The letter along with memo 10.02.2016 M.SATHYANARAYANAN. J jvm Judgment in C.S.No.48 of 2005 10.02.2016