M/S Fiorano Software Technologies ... vs M/S Advanced Micro Devices Inc.(Amd) on 18 March, 2010

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Karnataka High Court

M/S Fiorano Software Technologies ... vs M/S Advanced Micro Devices Inc.(Amd) on 18 March, 2010

Bench: Ashok B.Hinchigeri

IN TIIE HIGH COURT OF KARNATAKA AT BANGALORE
DATED THIS THE ISM DAY OF Ix/IARCII I.'

BEFORE

THE IIONELE MR. JUSTICE AISCHOI; I3. I:i"I:£A\V1V:('?_'.E_I!VIVv(}Ii'3§I"'.

M.F.A. NO.1684 OI5"«f2_'(:}*1_(A.)'(IPR)»_ '~ = x K
BETWEEN: V   V 

M/S FIORANO SOFTVVARE é
TECHNOLOGIES Pv'I'.'I,1'fI::. --_  .  
UNIT NO.1, UGF, INvEN'I'O'R EI...Or:K__  
INTERNATIONAL TECHNOLOGY." PEARK.  ~'
WHI'1'EFIELDRO}'~.D    
BANGALORE:56G'.3'86      
REPRESENTED HEREIN  D~IRECTOR
AND AUTI-IORI;SED SIG-N"A5{'O&RY7 
MS.ANJAI,ISAIN1"1«:;;:_'  «....,_,'''...APPELLAN'I'

. YA SONDIII. ADV. ,)
AND; % "   %

I. 4;: M/S ADVANCED MICRO DEVICES INC. (AMD)
 AMD PLACE, PO. BOX 3453
~  SUNDJYVALE, CA 94088-3453

' ~ A LI'NI_TED.,S"I§ATES OF' AMERICA

 RERRESEIITED BY ITS CEO AND

. ""ALITI%ICr_RI'SED SIGNATORY
 MR'. 'DIRK MEYER

 I M';'vs'AMD INDIA ENGINEERING

'CENTRE PVT. LTD.
* -. No.10 CHAMBERS @ MANTRI
RICHMOND ROAD, BANGALORE-560025
REPRESENTED BY ITS
DIRECTOR ...RESPOND£CN'I'S

(BY:SRI K.G.RAGHAVAi\I, SRADV, FOR
M/SDUA ASSOCIATE-S}



['\.)

THIS MFA IS FILED UNDER ORDER 413 RULE H1') OF
CPC, AGAENSTTHE ORDER DATED 18.02.2010 PASSEIV}-ON
IA NO.}. EN O.S.NO.4090/2009 ON THE FILE OF... XX'/"i}_Vi

ADDITIONAL CITY CIVIL JUDGE, BAN.C;AL}O--F§"E3I"-«

Tl.

DISMISSING IA No.1 FILED U/O 39 RULE I 8:  _

'rI~IIs iV[.F.A. COMING ON roR,'}IOMI«ssI.oII' 'i;1:£_"ibiSV .I_)IcIY, 

THE COURT DELIVERED T HE FOLLC)WI;'_NG:'

JUDGMENT:

This appeal is d§;.reCtedi.-a;<§ainstp_ the " 'Order: dated 16.2.2010 passed by Additional City Civil 511,0' I.A._No.1 in O.S.No.409i)/IiiOd?3I'."iV'.,'_ if '-- '1'11eV"vf75iC:{:e'E'i »e,<'5i'.i.he'C'ase in brief are that the appellant incorporated under the v".p_vprO§Jii3.i():1iS of Vi1*I'e.v_C_ompanies Act, 1956 providing the 'eIv1'i"erp1*i.seI software for service Oriented architecture, eI1te'i'I'prise' f_ Iriessaging and business process 'x__marIageuII«§eIIt. Its affiliate, M/s. Fiorano Software EIIC., is ":0:"Ihe0I'egistered Owner Of the mark 'Fiorano' in USA, UK. and European Union. It is also the owner of the mark 'FioraIIOMQ' in U.S.A. in India, its afﬁliate, Fiorano Software T(:'Ch1'1()1()gi€S Private Limited is the registered 3 owner of the mark 'Fiorano SOA Platform' and 'F'iaranol\/IQ.' It is also the owner of the mark 'Fiorana SOA Platform' in USA. The first respondent_f,is~.y_a multinational semiweonduotor Conipany_.--§l__base'd--. America. The second respondent is of "' the first respondent Company.

the word 'Fiorano' by the"re'-apondents. In.th:ei~r...Server'V.l' platform, the appellant 200$; seeking the reliefs interalia, restraining the respondents',.__theirw infringing the appelliaritls' ell 'Fioranol\/IQ.' and 'Fiarano SOA Platforiir ideniiictal name deceptively similar to t'hel'appe1lantt"'s trade mark and from passing ....M_QifistlieiJa.ppellantlsmsaid trade mark/name or any other ..._v.l7o.rld/ which is identical or deceptively similar to the,_said~ nhaiiie and mark in any manner whatsoever. in the said suit proceedings, the appellant xi'V-..f'iled_u?I.A.i\Io.l seeking the order of temporary injunction ..._for restraiining the respondents, their servants. agents, etc. from infringing or passing off or otherwise using the 53.33% The Trial Court.'s order refusing to grant the temporary injunction is being assailed in this appeal.

4. Sri Adithya Sondhi, the l€E1:I"iICClT the appellant prefaces his suhinissioii 4'w_i'tAhj"1h'e'jj'p:ay¢r fcoL:.nse1 for .p for the direction to the res»ponden'ts_ file"van.i._affiVdaiVit of uridertaking not to use lF"i'of%nQi} in their products. He subnii'ts7that he may not press this appeal at" is over the mechaiiical. contention that in the course of their and that the same is not any of their products. It is an 3._iunmistal{a'ble____grieVance of Sri Sondhi that the .respo11Vden'ts_dcVei1 on making such a submission before have continued to use the word

-V 'Fioranoﬂin' 'violation of the exparte temporary injunction granted and <::ontiri1,1ed till 6.2.2010. in this ' the appellants application filed invoking Order Rule 2A of CiP.C. complaining of the disobedience of ass.

the respondents is pending consideration beiore the Trial Court.

5. Sri Adithya Sondhi si1b.m«i.t:s:'.iV appellants registration is in and Class -- 42. He submitsthat tl1e'"~'.1"1 S.che:d.i,.;_1§ Trademarks Act, 2002 coritaipns.vv_pthe"'classifieation of goods and services: any distinction between the hardware...ariVd microchips being have the name and markiifg and the platforms are and that therefore there is and passing off. The prodjgets offered by the respondents fall "ll"-witll'1~ih lthesaniie cognate class. He pointedly brings to notice" words contained in Class -W9: data prcgeessinglajnd equipment and computers and scientific rand industrial research, computer programming

6. The iearned counsel submits that, as the A appellant is the prior user and registered owner of the marks 'Fiorano' and 'Fiorano SAC) Platform', the_.._ase of the said marks by the respondents infringement on the appellant's trade--n1ark~,.'::"

7. The learned counsel takes} e:i<;ce,ptior1"'~tiio Trial Court underlying the=ap__pellant's regé.strati_on trademark 'Fiorar1o' only a geographical place. is a small city in Italy and is not widely he relies on the Coart in the case of V FARM v. S.A. mTeNAsisam~m%;'[a'reamed in 2975(2) Kar.L.J. The the said decision is extracted hereiribelowz It "

it Though the word 'Nilgiris' was a ' name and 'Dairy Farm' was V of the business, the name 'Nilgiri '~.Cla.iry Farm' had become a trade name to the it eatterit necessary to maintain an action for passing off, and as ptaintgj" had acquired a valuable reputation, the Court would restrain the unauthorisea' use of that name and mark in a manner calculated to deceive the public and cause damage to tie ptairitgfjtl Therefore, he submits that the respondents caI_1~not be allowed to use the name and mark 'Fiorano' its use/expression to the place Italy despite of Registration standing in thev-'n'ame and,favofur 'of' the appellant.

8. He further and its affiliates are the and it has created enormous go.o'd'aﬁl'l apprehension is that if microchips and Dlatforrnsﬁ and mark 'Fiorano' manu'factureVd""%3y_:the"respondents and if any deficiency is Iloticedlit reputation of the appellant. in market for nofault and no contribution from its . slide'.

9.'.-~ _;The learned counsel submits that the ' "*»respond,.e'I1ts have been issuing various A' staternents/ advertisements on the website referring to ...their product as 'F'iorano' and by doing so, the V appellants trademark is infringed. In support of his submissions. he has relied on the Division Bench ;e___; 5;

9 judgment of the Allahabad High Court in the 'case of KHESHTRAPAL SI-IARMA v. PANcHmf':'--V:S;x1$EGH VARMA reported in AIR 293.5 ALLAHABA1):"26e'?;."r:"'

10. Sri Sondhi has aIsd=__re11fedA. fio1uith.e"[§eih-i___High Court judgment in the' -<_:__aseV'7:;f"' AKTIEGESELLSCHAFT Alia ANOTE-mg I-IYBO HINDUSTAN rep0rte'dﬁainA ,i'99%4'A:'DELHI 239. The relevant paragraphsv_G'f'--the Sa.i&dV_j1aVc1_g;ﬁ:eht are extracted hereinbelowﬂ ____ .:eaunsel_fbr' the defendant grhat c1'.ty_' in South America. Most gaecnale VrLauejzo_:i Qf it. When I asked the counsel asx'to_ a:.her'1:h,e heard of it, he reﬂecred, and "said hhehwasvhigrtararlt, Qf it I'ilZ_jusIi prior to filing Qf' written Asfaiement. I was unaware Qf it till I V' " ~ . _ V written sitaternent-

In my view, it. is but right that the ~.de_'ffendan£ should be restrained from using the * ward "Benz" with reference fa any underwear which is manufaczured by them. and in my view, injunction should issue, restraining the defendant"

to cease and desistffrom carrying on trade in any undergarments in. the rame Qf "Benz" and "Three I0 Pointed Human Being in a Ring". forIhwith._.._So ordered. "

11. The learned counsel drawing the Apex Court's judgment in~~the« l FOOD PRODUCTS PVT. I:;'.1fD.--T[' V HRAMBI-IAI PATEL 3.: oRSl.,:V}""i<¢pofted_ inVVAlA_11'z{V20'0e so 3304 submits that, the sophlisticationlllofe the users, buyers and consurners_"dCes::'notn':l.alyikays assure the absence of coI.i:flus_ior;.:'.llll fu'r-.l:h.eVi"hVe1d therein that in an aCtior1"l"xfvhere the defendant's tradern'arl:. disj;ide'r'i;tical--.yVit.h theﬁlaintiff s trademark, the Courtlwill not_enq't1ire_.Whe.ther the infringement is such as is _lil(ely"~t.o 'deC'e_iVe..of'~'cause confusion. .:l*'or buttressing his yet another submission court would substitute its discretion forllhthatiof-the Trial Court if the discretion by the Trial Vi,x(3oeurt is shown to have been exercised arbitrarily, .lc'a1ljriciously or perversely or where the court had " "ignored the settled principles of law regulating the grant or refusal of the interlocutory injunctions, the learned €834 Counsel has relied on the Horfble Supreme _{_3__ourt's judgment in the said Case of Ramdev (supra). 'll

13. Relying on the Apex Court in case of AMRITDHARA 4s.'ATY.ai,._lD.so GUPTA reported in AIR 1953 sC.4'49% hev"s%.;b.r;iViVts:; tiaatf the question has to be point of View of a man of average imperfect re- collection. Or1__this he also read out from l5§Narayanan on the Law of off (page 551 in the sixth published by Eastern Law House.AlWh:ichvvis"--e>ttraetedlhereinbelow "The__pLLrpose for Luhich. the trademark is " it Li$edl'l'is'émrnateriai. Thus, the mark need not be _us4e'dfor:::rii¢ purpose of brartciing the article." From the hsfarne commentary source, he read out para {page 675) wherein it is stated that the computer it har_di§vare and software are complimentary because they are used together.

ﬁgff.

14. Sri Sondhi has also relied upon the Bombay High Court's decision in the case of SHRI HARISI-I MOTICHAND SARIYA, KARTA AND R.S.CHAMl'-'ALAL, VIJAYCHAND SARIYA _ AJANTA INDIA LIMITED AND AJ1}NTA 'rim.:S2fs1's?roR,t:d' v CLOCK MFG. CO., passed in 09.04.2003, holding that tine'4-tooth'-hfuoshii'V:arid....,tVo<i3thV% paste are cognate. and a11ied__g'o0ds.._»_ 'I;he«i_i,ise_f?of the toothbrush and the "~..toQt}1ppaste"'ipigspi'0-held to be complimentaxy to each:A'othéi'; V _ inseparably linked tg"eéc'h@;~'thé'i?i;V _

15.}-._ has also grievance over the Trial not into the Certified copy of the Registr.a.ti'on, though it was produced five "th'e._day of passing the order on temporary injiiAne'tion&..'vfifiiiiilthis regard, he sought to draw support vh"~.p_.u"ftjom this":.Court's decision in the case of NANJUNDA @ N.s.TALL.AM AND OTHERS v. M/S.TALLAM

-pi'V"'sUi3BARAYA SETTY & sons AND OTHERS reported "'11"; ILR 2004 KAR 924. wherein it is held that there is . €55 no prohibition. in the Code of Civil Procedure to receive the documents subsequent to the filing of the if the Court finds that the documents are it resolving the dispute between the~p1i1'r*ties.'l_.A

16. Per contra Sri E{'.C}:Ra§lia\l?a.n, Senior Counsel appearing for the respondents subrniltsbthaltptl.ieVClhWor:d:l>l'Fiorano' is used as some kind- of ::":1,fe:search and development, respondents are not__ the trademark claimedﬂby th lap ' -. ' 'C

17. The'' learned Senior Counsel takes exception to the "copy olfﬂmtllhle Certificate of Registration being only the advancement application. No applicatioriiseeking leave of the Court. under Order 7 ""C.-:i:'V'f--__lRu1eL lei C.P.C. to produce the document is filed by _th..e_"appellantwplaintiff. According to the learned Senior ':'*Co--unsel, if a party sues upon docurnent. he has to 9' "produce the same along with the plaint. He submits that the power to receive the document subsequently £5!-i 14 has to be exercised with cireumspection and in-.___the rarest of the rare cases. In support of his submiss'iofn_s;v.. he has relied on the decision of the Andliraﬁ I' High Court in the Case of BADA BoDAz.At1-1' BADA LINGASWAMY AND lpgssed';:"i:1tl"

C.R.P.No.3704/2002 on 13;'1.'t:l';'300i.'*--._l m.3 l't:{eiVévant paragraph of the tsaid isilxeirztracted hereinbelowz "I3... r.<:adtng XIII alone would _Co--u,rl_' shall receive the docurnents':paiduced.onor: the settlement of if: been filed along with the pla:intt'o.r:statement. The Court has no pouger to the documents produced s1--:bsequen_t:ly;~li'urther; Sub~rule {3} of Rule 14 of VII ernpowers the Court to give permission or A leauAerA..to:the plaintiff to produce documents at a of hearing of the suit. Order XIII I' __I?ulev_ Order VII Rule 14 {3} have to be read together I harmoniously. Reading together would A. "that if the plaz'.ntt[/" applies for permission or I * to produce documents to be received in evidence at the hearing of the suit which documents were not produced on or before settlenient of the issues or at the time of production of the plaint, the Court has to exercise sound diSCF€liOI1 having regard to the jacts and I6 buyers of the articles should be borne in mind--"'-while considering the temporary injunction app1ic.z;'t_ions';"Ve. 'In testing for Iikehhood of confusiorl under K the following must be COl1Sid€I'€C?'."FM"V A

1. A The nature The similarity or dissimiiaritigriwof' i'hev_"_;m:'arI€s "

in their eniireties asliiot. appewfance; '-.so"iind;"

connotation ad cornrr1erciai'imVpresston,: I The sz'.milan'tyvor..g:iisséniiZar=ify and naiizre of the goods or useruicesv as in an application or Areg.is:tra:i'£on'_ '_ ":connect'ion with z,ohi'ch' a ,r)rior§ncarlc'is_ in ilsea' The_vsi:?_1'i!§arii:Q or, xdvi§ssiiniiari:y of established,

-1gﬁcely:.iO«cohfiii1ae' .ir'cz.r1e channels. x2."he'-- conditions which and buyers to whom sales t_1re"~"niade, i.e., "impulse" U. h 'V carefulh's'ophisiicated purchasing. ..1f'hefarrie_Qf the prior mark (sales, advertising. A age}.

Thetvniimber' and nature of similar marks in use on similar goods.

and extent of any actual confusion.

ﬁﬁié 17

8. T he length of time during and con.di.IioI1s under which there has been concurrent, use witf1.outh evidence Qf actual COI1f[.L$iOf1.

9. The variety Q1" goods on which a rnaricis _:(;=x*_ . not used {house mark. 'jE1rr;Lfiy""rT;o«_rR=,& pr0d::m:.t_ ' mark).

1 O. xxzxvoc

11. The extent to u}hzT.r:h a righhtuxto exclude others j}br;'t' Qf fnttéirk on its Qoods. " V' V 'V H h

12. The 'exteritt.gﬁotettital cbhffttston i.e.. whether de fT"'i~3'..ﬂ't':'".'l:§-'.;'§'> or ;:_1,t'I:wstdr1!I'_(_:tl.

13.'=.,Any othefj-estiaébiiehed fact probative Qf the effect: of u4se';"f" _ "

4519. 'l'he-»Ie:a'rheti Senior Counsei submits that the 'used bstwthe appellant. and the respondents A21":e"€1_1ff'e'ré§1*1.'t_; *;xE_1e*i'r goods are differem. In this regard. he V _ 211s0"'relie:'d and the d€3(3iSiOI1 of the Apex Court in the Case v.rAND-ER LTD. AND ANOTHER v. ANTOX INDIA P. 'lIQ'.iV"VI')'.;'A'rep0rted in 1990 (Supp) SCC 72?'. T he relevant fﬁziragraph of the said judgment. is extracted herembeiowt 83%;

19

20. The appellants registration under C1ass~9 relates only to the software. The manufacture vo'fu"the chips by the respondents is in the hardware s__e;ctor,'_~ respondents are not releasing the micro .the"

label 'Fiorano'. As the respondents .' software services, they are fnwno vvay 'infri:.1gingy_Von_the trademark of the appellant.

21. The submissions rif the _1e_ar_'ri.edj_.eounse1 have received my anfiioligs eonsider'ati'on.,____VIf' do not see any head~on appellant and the respon:V~:1en_ts.VVh°'Th_ye"tstand, of the respondents in the course of"the the arguments here is that the"y«§{have usedathe mark and the name 'F'1orano' as ~;=.ome code number in their research and hey are not using and they do not proposetohuse it on any of their finished products. But A '»ff€'hei"«--rnatter cannot be left at that, because it is the d grievance of the appellant that even in the wake of the temporary injunction granted eariier by the Triai Court, the respondents continue to use the name and mark _ t "as 71 bu-wt .

23. Further, pursuant to the general direetioris issued by the Apex Court in the case of LIMITED. V. ';:vs MOTOR coM1>ANYf' reported in (2009) 9 sec 797 RICE AND GENERAL MILI§s_ J = CHAWALWALA. reported in---@609) "1 "fer the speedy disposal reiati'ng"v to the trademarks, also deem it necessary to; ..t'.c_)_:didsp0se of the suit within an? rtipnths from the date of prodtietieri of today's order: Both the cooperate with the 'I'ria1 Couiftin sipeedyidisépsosal of the matter. A Ti9iis_"appeal is disposed of without going into controversy and without expressing on the tenabiiity of the order under appeal. is dear that the Trial Ceurt shall adjudicate the ' matter independently of and 'L1I1**iI"iﬂ11€3}"}C€(If by the reasons giveii by it while dismissing the appeliants l.A. Nrxl for terr1p0razy injunction.

53% "'3"?

25. This appeai is ac:c:o2"d;'11gly céisposed of. No.--__ order to Costs.

Sd/-3' VG R.

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