Madras High Court
Hindustan Unilever Limited vs Mr.P.Ramar on 23 October, 2019
Author: N. Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.264 of 2015
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 23.10.2019
THE HONOURABLE MR. JUSTICE N.SATHISH KUMAR
C.S.NO.264 of 2015 and
O.A.No.367, 368, 369 and 2488 of 2015
Hindustan Unilever Limited
An existing company registered under the Companies Act, 1913
having its office at No.101, Santhome High Road,
Chennai 600 028. ... Plaintiff
Vs.
1. Mr.P.Ramar, Proprietor,
Mullai Salt Company,
48/11, Levenchipuram, 2nd street,
Tuticorin, Tamil Nadu 628 03.
2. M/s Mullai Salt Company,
48/11, Levenchipuram, 2nd Street,
Tuticorin, Tamilnadu 628 003. ... Defendants
PRAYER Civil Suit filed under Order VII Rule 1 of the Code of Civil
Procedure read with Order IV Rule 1 of the Original Side Rules of the Madras High
Court and Section 11. 29, 134, 135 of the Trade Marks Act, 1999 and Section 62 of
the Copyright Act, 1957 to pass decree and judgment for
i) a permanent injunction restraining the defendant, their directors,
employees, officers, servants, agents and all others acting for and on their behalf
from making, selling, distributing, advertising, exporting, offering for sale, and in
any other manner, directly or indirectly, dealing with the mark ANNAPOORANI and/
or any other mark deceptively similar in any product including salt in packaging,
including
http://www.judis.nic.in packet, sachets, labels and containers, as are a colorable imitation and
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substantial reproduction of the plaintiff's ANNAPURNA's Label and packaging
amounting to an infringement of the plaintiff's registered trademark Nos.677242,
720333, 835880 and 657595* (amended as per order dated 24.11.2016 in A.No.6181 of
2016).
b) a permanent injunction restraining the defendant, the officers,
employees, servants and agents, from manufacturing, selling, offering for sale,
advertising and directly or indirectly dealing under the mark ANNAPOORANI and / or
any other mark deceptively similar in any product including salt in packaging,
including packets, sachets, labels and containers, as are a colorable imitation and
substantial reproduction of the plaintiff's ANNAPURNA's Label and packaging amount
to an infringement of the plaintiff's copyright therein.
c) a permanent injunction restraining the defendant, its officers,
employees, servants and agents, from manufacturing, selling, offering for sale,
advertising and directly or indirectly dealing under the mark ANNAPOORANI and / or
any other mark deceptively similar in any product including salt in packaging,
including packets, sachets, labels and containers, as are a colorable imitation and
substantial reproduction of the plaintiff's trademark ANNAPURNA and ANNAPURNA's
Label and packaging amount to passing off of the product of the defendant as and
for that of the plaintiff's ANNAPURNA trademark
d) grant of an order of delivery up for destruction of all brochures, printed
material,all banners, labels, dyes, blocks, moulds, screen prints, packing materials
and / or any material which infringes of plaintiffs' registered trademarks under
numbers registered trademark Nos.677242, 720333, 835880 and 657595* (amended as
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per order dated 24.11.2016 in A.No.6181 of 2016) and its copyright in the plaintiff's
ANNAPURNA's Label and packaging.
e) a direction to the defendant for rendition of accounts in respect of
their alleged activities especially sale and promotion of products bearing the mark
ANNAPOORANI in packaging, including packets, sachets, labels and containers, as
are a colorable imitation and substantial reproduction of the plaintiff's ANNAPURNA
trademark and for costs.
For Plaintiff : Mr.S.Bharath
for Mr.K.Premchander
For Defendants : Mr.M.Sriram
JUDGEMENT
The suit has been filed for
a) a permanent injunction restraining the defendant, their directors, employees, officers, servants, agents and all others acting for and on their behalf from making, selling, distributing, advertising, exporting, offering for sale, and in any other manner, directly or indirectly, dealing with the mark ANNAPOORANI and/ or any other mark deceptively similar in any product including salt in packaging, including packet, sachets, labels and containers, as are a colorable imitation and substantial reproduction of the plaintiff's ANNAPURNA's Label and packaging amounting to an infringement of the plaintiff's registered trademark Nos.677242, 720333, 835880 and 657595* (amended as per order dated 24.11.2016 in A.No.6181 of 2016).
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b) a permanent injunction restraining the defendant, the officers, employees, servants and agents, from manufacturing, selling, offering for sale, advertising and directly or indirectly dealing under the mark ANNAPOORANI and / or any other mark deceptively similar in any product including salt in packaging, including packets, sachets, labels and containers, as are a colorable imitation and substantial reproduction of the plaintiff's ANNAPURNA's Label and packaging amount to an infringement of the plaintiff's copyright therein.
c) a permanent injunction restraining the defendant, its officers, employees, servants and agents, from manufacturing, selling, offering for sale, advertising and directly or indirectly dealing under the mark ANNAPOORANI and / or any other mark deceptively similar in any product including salt in packaging, including packets, sachets, labels and containers, as are a colorable imitation and substantial reproduction of the plaintiff's trademark ANNAPURNA and ANNAPURNA's Label and packaging amount to passing off of the product of the defendant as and for that of the plaintiff's ANNAPURNA trademark
d) grant of an order of delivery up for destruction of all brochures, printed material,all banners, labels, dyes, blocks, moulds, screen prints, packing materials and / or any material which infringes of plaintiffs' registered trademarks under numbers registered trademark Nos.677242, 720333, 835880 and 657595* (amended as per order dated 24.11.2016 in A.No.6181 of 2016) and its copyright in the plaintiff's ANNAPURNA's Label and packaging.
e) a direction to the defendant for rendition of accounts in respect of their alleged activities especially sale and promotion of products bearing the mark http://www.judis.nic.in 4/14 C.S.No.264 of 2015 ANNAPOORANI in packaging, including packets, sachets, labels and containers, as are a colorable imitation and substantial reproduction of the plaintiff's ANNAPURNA trademark and for costs.
2.1. The case of the plaintiff in nutshell is as follows The plaintiff company was established in India in the year 1933 and is the proprietor of the registered trademarks TAJ MAHAL, BRU, KISSAN and ANNAPURNA. The trademark ANNAPURNA was adopted and first launched in the year 1994 in relation to salt, wheat, wheat flour and preparations. The plaintiff company registered their trade mark ANNAPURNA vide Certificate No.664869 in Class 32 and ANNAPURNA Label vide Certificate No.720333 in Class 30 and they are the copyright holder of that trademark. The trademark ANNAPURNA falls in the plaintiff company's concept of liberating brands. The plaintiff company's various brands including ANNAPURNA are available in above 3 million outlets. The plaintiff company has advertised the trademark ANNAPURNA through the television, newspapers, magazines, hoardings and banners. The registration of the trademark ANNAPURNA is valid, subsisting and existing in force in favour of the plaintiff company. The trademark ANNAPURNA and its trade dress, writing style are a well known mark in India.
2.2. The defendants 1 and 2 have commenced to manufacture and sell salt and other products under the name " ANNAPOORANI', which is identical to that of the plaintiff's mark ANNAPURNA. The trade dress used by the defendants is also identical http://www.judis.nic.in and similar to that of the plaintiff's trade dress. They also copied other 5/14 C.S.No.264 of 2015 information from the plaintiff's products to deceive the public to give false representation that the products are of good quality and originating from plaintiff's place. The identical trademark used by the defendant make confusion among the public and the above said act of the defendants is amounts to infringement of trade mark and copyright of the plaintiff's trademark and in such circumstances, there lies a statutory presumption under Section 29(3) of the Trademarks Act, 1999. If the defendants are permitted to use the trademark and trade dress of the plaintiff, the plaintiff will put to irreparable loss and and it will damage the goodwill and reputation of the plaintiff. Hence the suit.
3. The contentions of the defendants in their written statement is briefly as follows.
i) The first defendant is a distributor of salt trading in the name and style of M/s White Gold Annapoorani Iodised Crystal" and manufactured by the 2nd defendant. The 2nd defendant has filed an application for registration of trademark and the same is pending before the Registrar of Trademark, Chennai. The first defendant has been allotted TM.No.2563746 by the trademark Registry.
ii) The plaintiff's mark is " Annapurna" and the defendants mark is " White Gold Annapoorni Iodised Crystal" which is no way connected with that of the plaintiff's mark. There is no aristick work in " Annapoorna label", as alleged by the plaintiff and the same cannot be brought under the purview of copyright. The plaintiff has used the name " Annapoorna" for wheat flour, salt and other preparations http://www.judis.nic.in and they have entered in the salt market at a very later stage. 6/14 C.S.No.264 of 2015
Whereas, the defendant has been continuously manufacturing salt under various brands including " White Gold Annapoorani Iodised crystal" from the year 1985.
iii) It is denied that the plaintiff is the copyright holder for the label " Annapurna". The plaintiff company has no right to claim trademark over a word which is used in common parlance, even otherwise there is no similarity between " Annapurna" and " White Gold Annapoorani". As far as the food products are concerned, the trademark owner gets a limited right in relation to the descriptive products.
iv) The defendants have been using the mark for quite some years and the plaintiff, who have permitted the defendants to carry on the business is now estopped from making a claim for passing off or infringement action, as per the provisions of Section 33 of the Trademark Act. In order to have an action for passing off, a registered mark should be distinctive arbitrarily, but the mark registered by the plaintiff is only a distinctive term and the plaintiff is not entitled for monopolize the descriptive term, which is totally prohibited under the provisions of the Trademark Act. Hence the suit is liable to be dismissed.
4. The averments made in the reply statement filed by the plaintiff is as follows.
i) The trademark application for the mark " White gold Annapoorani" under No.2563746 in Class 30 being relied on by the defendant has been refused by the Trademarks http://www.judis.nic.in Registry as early as in March 2018 and to the best of the plaintiff's 7/14 C.S.No.264 of 2015 knowledge, no appeal has been preferred by the defendant. The claim of the defendants that they have manufactured salt under the mark " White gold Annapoorani" since 1985 is false and they have not filed a single document to prove the same along with the written statement.
ii) The plaintiff is the proprietor of the registered trademark " Annapurna "
in Class 30 for various goods, including Salt and Atta and they are the copyright holder also. The trade dress and lable " Annapurna" which has become immensely distinctive over the years owing to continuous, extensive and uninterrupted use of the mark by the plaintiff in the market.
iii) The subsequent acts of the defendant in adopting the mark and label "
Annapoorani" despite having constructive notice of the plaintiff's statutory mark "
Annapurna" is patently dishonest as their alleged mark " White Gold" is in extremely small font in one corner of the label, whereas, the mark " Annapoorani" is in large font with identical colour as compared to the plaintiff's trade dress. This is intended to deceive the general public and cause confusion among consumers. The defendant after copying the plaintiff's trade mark and trade dress to illegally profit from the same is estopped from claiming that the mark is descriptive. The defendant has no trademark registration and the mark applied for by the defendant has been refused by the Trademarks Registry. The defendant's claim of acquiescence is not maintainable and they have no locus to claim any right. The plaintiff has prior statutory and common law rights over the mark " Annapurna" whereas the defendant http://www.judis.nic.in has dishonestly adopted the deceptively similar trademark " Annapoorani" 8/14 C.S.No.264 of 2015
only with a view to ride on the immense goodwill and reputation built up by the plaintiffs. Therefore, the suit may be decreed as prayed for.
5. The following issues are framed for consideration in this suit.
1. Whether the plaintiff is the prior user of the mark Annapurna?
2. Whether the mark Annapoorani adopted by the defendant is almost identical/similar to plaintiff's mark Annapurna?
3. Whether the defendant has, in the past, copied plaintiff's trademark Annapurna and later undertook not to use the mark Annapurna by signing an undertaking dated 2nd February, 2010.
4. Whether the adoption of the mark " Annapoorani" for salt by the defendant is dis-honest?
5. Whether the defendants' use of the mark " Annapoorani" for salt amounts to infringement of the plaintiff's registered trademark " Annapurna" ?
6. Whether the suit is barred by limitation?
7. Whether the plaintiff can claim trademark over a generic name "
Annapoorna"
8. To what relief.
6. The case was posted before the learned Additional Master-I for recording evidence. The learned Additional Master-I recorded the evidence of PW1 and marked Ex.P1 to Ex.P17. No oral and documentary evidence was adduced on the side of the defendants.
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7. I have perused the evidence of PW1 and the documents adduced on the side of the plaintiff. The PW1 in his evidence has spoken about the nature of the business of the plaintiff and the registration of the trade mark ANNAPURNA. Ex.P2 is the copy of the distribution agreement entered into between the plaintiff and its dealers, through whom, the plaintiff company carries on its business. Ex.P4 and Ex.P5 are the Charted Accountant report on sales and advertisement expenses in relation to the brand ANNAPURNA and the sales bills respectively. Ex.P6, Ex.P7, Ex.P9 and Ex.P10 are the legal Use Certificate issued for the mark ANNAPURNA under the registration No.66489, 677242, 20333 and 657595 respectively. Ex.P8 is the Registration Certificate issued in Class 30 under registration No.835880. Ex.P11 is the deed of assignment for copy right of the ANNAPURNA Label. Ex.P13 is pictures of the product package of the plaintiff and the Ex.P14 is the pictures of the product package of the defendant. As per Ex.P15, Sale Ban Agreement entered into between the plaintiff and the first defendant, the first defendant undertook not to sell salt under the mark ANNAPURANI individually or through the 2nd defendant.
8. A comparison of Ex.P13 and Ex.P14, shows that the pictures of the package of the defendants with the mark ANNAPURANI is similar and identical to that of the pictures of the plaintiff's product package with the mark ANNAPURNA. The plaintiff company is the copyright holder of the mark ANNAPURNA and they had obtained proper registration certificates also under Class 30 and 32 for legal use of their product under the Trademark and Label ANNAPURNA, as per Ex.P6 to Ex.P10. http://www.judis.nic.in 10/14 C.S.No.264 of 2015
9. Though the defendants have filed written statement refuting the averments made in the plaint, they have not chosen to examine any witness and file documents to prove their case that they are the proprietor of the registered trademark ANNAPURANI. It is pertinent to note that the defendants have not even cross examined the PW1 to establish that the facts alleged by the defendants are true. Further, as per Ex.P15, Sale Agreement entered into between the plaintiff and the first defendant, the first defendant undertook not to sell salt under the mark ANNAPURANI individually or through the 2nd defendant. Therefore, the evidence of PW1 and the documents adduced by the plaintiff proved their case. If the defendants continue their business using the mark ANNAPURANI, which is identical and similar to that of the plaintiff's mark ANNAPURNA, it will definitely make confusion among the public and also damage the goodwill and reputation of the plaintiff. Hence, the plaintiff is entitled to get the relief of permanent injunctions and destruction as prayed for. Accordingly, all the issues are answered in favour of the plaintiff and against the defendant and the plaintiff is entitled to get the decree as prayed for in the plaint prayer A to D.
10. The learned counsel appearing for the plaintiff submitted that the plaintiff is satisfied with the decree for the plaint prayers A to D alone. http://www.judis.nic.in 11/14 C.S.No.264 of 2015
11. Accordingly, the suit is decreed for permanent injunctions and destruction as prayed for in the plaint prayer A to D. The defendants are directed to destroy the stocks within 6 months. The suit against the plaint prayer 'E' is dismissed. No costs. The connected original applications are closed.
23.10.2019 Index: Yes/No Internet: Yes/No Speaking/Non Speaking order mst Plaintiff side witness PW1 Mrs.Shakthi Priya Plaintiff side witness Ex.P1 19.04.2019 Copy of Authorisation letter given to PW1 to give evidence.
Ex.P2 2003 Copy of Distributor's agreement entered by the plaintiff
Ex.P3 08.03.2002 Print out copy of Economic Times-Online newspaper report
Ex.P4 15.05.2012 Copy of Chartered Accountant Report
Ex.P5 2004-2007 Photostat copy of the sales bills
Ex.P6 24.12.2003 Copy of Legal Use Certificate for the mark ANNAPURNA
in Class 32 under No.664869
Ex.P7 20.12.2005 Copy of Legal Use Certificate for the mark KISHAN
ANNAPURNA in Class 30 under No.677242
Ex.P8 05.07.2012 Copy of Legal Use Certificate for the mark ANNAPURNA
Label in Class 30 under No.835880
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Ex.P9 28.11.2005 Copy of Legal Use Certificate for the mark ANNAPURNA
Label in Class 30 under No.720333
Ex.10 06.03.1995 Copy of Legal Use Certificate for the mark ANNAPURNA
under No.657595
Ex.P11 08.12.2005 Photostat copy of the Deed of assignment for
Copy Right.
Ex.P12 - Print out of orders obtained by the plaintiff in relation
to the mark ANNAPURNA
Ex.P13 - Picuture of the product package of the plaintiff
Ex.P14 - Picture of the product package of the defendants
Ex.P15 02.02.2010 Copy of the Sale Ban Agreement entered into beween the
plaintiff and the first defendant
Ex.P16 02.02.2019 Copy of the Sale Ban Agreement entered into between the
plaintiff and one T.Balakrishnan
Ex.P17 27.09.2019 Original Affidavit under Section 65 of the Evidence Act.
Defendant side witness and exhibits Nil
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N. SATHISH KUMAR, J.
mst
C.S.NO.264 of 2015 and
O.A.No.367, 368, 369 and 2488 of 2015
23.10.2019
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