Madras High Court
Hindustan Colas Private Limited vs Muthoos Enterprises on 12 January, 2024
Author: Abdul Quddhose
Bench: Abdul Quddhose
C.S.(Comm. Div.)No.270 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 04.01.2024
Pronounced on : 12.01.2024
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S.(Comm. Div.)No.270 of 2019
Hindustan Colas Private Limited,
HINCOL House, B-601,
6th Floor, Marathon Futurex,
N M Joshi Marg, Lower Parel,
Mumbai - 400 013.
Rep. by its Chief Operating Officer,
Mr.Raju N Nair ... Plaintiff
Vs.
Muthoos Enterprises,
237/2, Rohini Flats,
7th Avenue, Annanagar,
Chennai - 600 101. ... Defendant
Prayer: Plaint filed under Order IV Rule 1 of the Original Side Rules and
Order VII Rule 1 of the C.P.C. read with Sections 27, 134 and 135 of the
Trademarks Act, 1999, Sections 51, 54, 55 and 62 of the Copyright Act,
1957 and Proviso 1 to Section 7 of the Commercial Courts, Commercial
Division and Commercial Appellate Division of High Courts Act, 2015:
a) a permanent injunction restraining the defendant, themselves,
their partners, successors-in-business, servants, agents, distributors,
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C.S.(Comm. Div.)No.270 of 2019
dealers, stockists, wholesalers, retailers, shop keepers, representatives,
assigns and all other persons claiming through them from manufacturing,
selling and distributing, advertising bitumen emulsion using the
MUTHOOS label which is almost identical/deceptively similar to the
plaintiff's HINCOL label amounting to infringement of the plaintiff's
copyright in the HINCOL label, in any manner whatsoever;
b) a permanent injunction restraining the defendants by
themselves, their directors, legal representatives, successors in business,
assigns, servants, agents, transporters, distributors, printers, stockists,
wholesalers, dealers, retailers, advertisers or any one claiming through or
under them from committing acts of passing off and enabling others to
pass off by manufacturing, distributing, marketing selling, offering for
sale, advertising or in any other manner dealing in bitumen emulsion or
any other product bearing the deceptively similar mark/label MUTHOOS
which is confusingly similar to plaintiffs mark/label HINCOL, or by
using any other similar label, get -up, or packaging, which in any manner
whatsoever would be considered to be similar to the plaintiff's label, get
up or packaging;
c) the defendant be ordered to pay to the plaintiff a sum of
Rs.10,00,000/- as damages for committing acts of infringement of
copyright and passing off;
d) the defendant be ordered to surrender to the plaintiff for
destruction all goods advertisement materials, packing materials, cartons,
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C.S.(Comm. Div.)No.270 of 2019
wrappers, labels in respect of bitumen emulsion and other allied / cognate
goods containing the offending MUTHOOS mark/label or any other
mark/label similar to plaintiff's trademark/label HINCOL;
e) a preliminary decree he passed in favour of the plaintiff
directing the defendant to render true and faithful account of profits
earned by them by use of offending MUTHOOS label/trademark for
bitumen emulsion or other allied and cognate goods and a final decree be
passed in favour of the plaintiff for the amount of profits thus found to
have been made by the defendant after the latter have rendered accounts;
f) for entire costs of the suit.
For Plaintiff : Mr.Arun C.Mohan
For defendant : Mr.P.Sanjai Gandhi
JUDGMENT
The suit has been filed for infringement of copyright and for passing off and for the consequential relief of damages.
2. According to the plaintiff, they have adopted the mark of "Hincol" along with its distinct logo / label as early as in the year 1996 https://www.mhc.tn.gov.in/judis 3/41 C.S.(Comm. Div.)No.270 of 2019 for the purpose of its flagship product, "bitumen emulsion". The packaging of the plaintiff's barrels that contain the plaintiff's bitumen emulsion are black in colour with the "Hincol" logo emblazoned in the centre along with a diamond shape in yellow surrounding the "Hincol" logo. According to the plaintiff, their colour scheme of black and yellow on a barrel is identified with that of the plaintiff's for the last 27 years.
3. According to the plaintiff, the defendant adopted the mark "Muthoos" for packaging of a similar product i.e., "bitumen emulsion". However, according to the plaintiff, the defendant has copied the colour scheme of black and yellow, get up containing the yellow in diamond shape and layout thereof bearing an overall similarity to the plaintiff's label. Under those circumstances, this suit has been filed for infringement of copyright and passing off and for the consequential relief of damages.
4. However, according to the defendant, they have established their business in the year 2009 and obtained trademark registration for their logo "Muthoos Enterprises". According to them, the plaintiff never challenged the defendant's trademark registration for their logo "Muthoos https://www.mhc.tn.gov.in/judis 4/41 C.S.(Comm. Div.)No.270 of 2019 Enterprises", by filing an appropriate application under the Trademarks Act, seeking for rectification of the defendant's trademark registration for their logo "Muthoos Enterprises". According to the defendant, having not sought for rectification of the registration of the defendant's logo "Muthoos Enterprises" as per the provisions of the Trademarks Act, the present suit is not maintainable. The defendant would also contend in their written statement that the suit is barred by limitation under Order VII Rule 1 of C.P.C. read with Sections 27, 134 and 135 of the Trademarks Act, 1999.
5. According to the defendant, the attempt made by the plaintiff that they noticed the defendant's usage of the logo "Muthoos Enterprises"
and the trade dress, only in the year 2019, is a false statement and has been made only for the purpose of saving limitation for filing the present suit.
6. The defendant categorically states that their logo/ label is not deceptively similar to that of the plaintiff's logo / label and will not cause any confusion in the minds of the general public and will never give them an impression that the product viz., "bitumen emulsion", purchased from https://www.mhc.tn.gov.in/judis 5/41 C.S.(Comm. Div.)No.270 of 2019 the defendant under its trade name "Muthoos Enterprises" is that of the plaintiff.
7. According to the defendant, the plaintiff's logo with a tag line "we open the way" differentiates from the defendant's logo which does not contain any tag line.
8. Based on the pleadings of the plaintiff and the defendant, the following issues were framed by this Court:
a) Whether the defendant is infringing the plaintiff's copyright in the "Hincol" label by using an identical or deceptively similar label or packaging in their "Muthoos" label?;
b) Whether the defendant's adoptation of an identical trade dress as that of the plaintiff's distinct label or packaging amounts to passing off?
9. Before the learned Additional Master - IV, the plaintiff's witness, Mr.Subin Punnoose, who is the Regional Business Head- South of the plaintiff, was examined as a witness (PW1). The proof affidavit of Mr.Subin Punnoose (PW1) was also filed before the learned Additional Master - IV. In his proof affidavit, PW1 has reiterated the contents of the https://www.mhc.tn.gov.in/judis 6/41 C.S.(Comm. Div.)No.270 of 2019 plaint. Through, PW1, the following documents were marked as exhibits on the side of the plaintiff:
Exhibit Nature of Documents Date
No.
P1 Notarized copy of power of attorney 10.04.2017
P2 Certified copy of registration of trademark 02.08.2000
registered under No.944421 in class 19
P3 Certified copy of registration of trademark 02.07.2017
registered under No.3595445 in class 19
P4 Copies of invoices making use of the plaintiff's
mark
P5 Quality Control certificate granted to the plaintiff
P6 Copies of advertisements issued by plaintiff
making use of the HINCOL brand
P7 Copies of brochures issued by plaintiff making
use of the HINCOL brand
P8 Cease and desist notice issued by the plaintiff to 23.01.2019
defendant
P9 Defendant's reply 03.02.2019
P10 Plaintiff's HINCOL product
P11 Defendant's MUTHOOS product
10. The plaintiff witness (PW1) was also cross examined by the defendant's counsel.
11. On the side of the defendant, Mr.M.Velmurugan, its Proprietor, was examined as a witness (DW1). Mr.M.Velmurugan (DW1), had also filed his proof affidavit, reiterating the defences which were raised in the written statement. Through DW1, the following documents were marked https://www.mhc.tn.gov.in/judis 7/41 C.S.(Comm. Div.)No.270 of 2019 as exhibits:
Exhibit Nature of Documents Date
No.
D1 Registration Certificate of TM No.2048921 02.11.2010
D2 Letter issued by TN Pollution Control Board 01.11.2016
D3 EQFS Certification
D4 Acknowledgment issued by Government of TN 30.08.2010
D5 Certificate issued by Ministry of Commerce and 27.06.2012
Industry
D6 Tax Invoice 16.10.2012
D7 Tax Invoice 12.03.2013
D8 Tax Invoice 28.05.2013
D9 Tax Invoice 01.10.2015
D10 Tax Invoice 09.10.2015
D11 Tax Invoice 06.05.2016
D12 Tax Invoice 01.03.2017
D13 Tax Invoice 04.07.2017
D14 Tax Invoice 13.07.2017
D15 Tax Invoice 08.01.2018
D16 Tax Invoice 08.01.2018
D17 Tax Invoice 04.12.2018
D18 Tax Invoice 28.12.2018
D19 Tax Invoice 02.04.2019
D20 Tax Invoice 09.04.2019
D21 Copy of notice 03.09.2011
D22 Legal use certificate of TM No.2048921 02.11.2010
D23 Purchase Bills --
D24 Tax Invoice 11.05.2012
D25 Tax Invoice 12.05.2016
D26 Tax Invoice 15.07.2016
D27 Tax Invoice 21.06.2017
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Exhibit Nature of Documents Date
No.
D28 Tax Invoice 09.04.2018
D29 Tax Invoice 09.06.2018
D30 Tax Invoice 15.12.2021
D31 Tax Invoice 12.04.2017
D32 Tax Invoice 30.07.2022
D33 Tax Invoice 06.09.2022
12. The defendant witness (DW1) was also cross examined by the plaintiff's counsel.
13. Heard, Mr.Arun C. Mohan, learned counsel for the plaintiff and Mr.P.Sanjai Gandhi, learned counsel for the defendant.
14. Learned counsel for the plaintiff during the course of his submissions reiterated the contents of the plaint. In particular, he drew the attention of this Court to the exhibits marked on the side of the plaintiff and referring to the same he would submit as follows:
a) It is evident on comparison of the plaintiff's "Hincol" label and the defendant's "Muthoos" label that the defendant's label is visually identical to that of the plaintiff's label; According to him, the defendant has adopted the essential features of the plaintiff's trade dress thereby the https://www.mhc.tn.gov.in/judis 9/41 C.S.(Comm. Div.)No.270 of 2019 case for passing off arises against the defendant and no further evidence is required to establish the plaintiff's rights;
b) As per the defendant's own admission in the written statement, they have admitted to have adopted the mark "Muthoos" only in the year 2010, whereas, it is the plaintiff's case that they have adopted the mark "Hincol" in the year 1996 itself. Being a second comer in the market, the defendant owed a duty to name and dress their product differently from the first comer i.e., the plaintiff to avoid all likelihood of confusion;
c) The plaintiff being the owner and prior adopter of a well established label and trade dress such as "Hincol" will entitle them to prevent competitors from boosting their own sales by misleading public into believing that the competitor's products are in some way connected with and share the same reputation of the plaintiff's bitumen emulsion;
d) The defendant has also not disputed to the use of the impugned label "Muthoos" and neither have they led any evidence to disprove the same. Hence, according to the learned counsel for the plaintiff, it is proved beyond doubt that the defendant has committed acts of copyright infringement.
15. In respect of the action for passing off, the learned counsel for https://www.mhc.tn.gov.in/judis 10/41 C.S.(Comm. Div.)No.270 of 2019 the plaintiff would submit as follow:
a) In an action for passing off, the nature of marks, degree of resemblances, nature of the goods, similarity in the nature, class of purchasers, mode of purchasing and any other surrounding circumstances should be taken into consideration. Therefore, according to the learned counsel for the plaintiff, since the nature of the label marks, the identical outlook, both goods being "bitumen emulsion" having same class of purchasers and purchasing strength, similarities in the mark outweigh any ounce of dissimilarity. Hence, the defendant has committed an act of passing off;
b) The goodwill and reputation of the plaintiff's trademark "Hincol" in respect of "bitumen emulsion" is well known in the Indian Infrastructure Industry since its inception. The plaintiff has been a member of various committees, promoting various world-class technologies in India. Over the years, the plaintiff has played a pioneering role in the field of "bitumen emulsion". In order to establish their long, extensive and continuous use of the products, the plaintiff has also filed invoices for sale of plaintiff's "Hincol" barrels. Due to copyright infringement and the act of passing off committed by the defendant, the plaintiff's goodwill and reputation has taken a beating in the Indian https://www.mhc.tn.gov.in/judis 11/41 C.S.(Comm. Div.)No.270 of 2019 Infrastructure Industry;
c) The defendant, by copying the get up and the colour scheme similar to that of the plaintiff, has surpassed norms of honesty and fair trade practices, which will lead to unfair competition as the defendant will ride on the success and the reputation of the plaintiff. The quality of the defendant's bitumen emulsion cannot match with that of the plaintiff's bitumen emulsion and any customer buying defendant's product thinking the same to be the plaintiff's would be made to face dissatisfaction, which would land up tarnishing the hard-earned good will and reputation of the plaintiff.
16. With regard to the damage claim made by the plaintiff, the learned counsel for the plaintiff would submit that the plaintiff has suffered loss and continues to suffer loss to their reputation and goodwill on account of the act of copyright infringement and passing off committed by the defendant. The high reputation and goodwill of the plaintiff's bitumen emulsion sold under the label "Hincol" can be made out from the awards and recognition of the plaintiff. The plaintiff in a passing off action need not prove that it has actually suffered damages by loss of business or in any other way. The probability of damages is https://www.mhc.tn.gov.in/judis 12/41 C.S.(Comm. Div.)No.270 of 2019 enough. Therefore, the plaintiff need not prove that individual sales will be diverted to the defendant in order to make out the damage element in the passing off action. If there is a likelihood of deception, damages are bound to follow.
17. The learned counsel for the plaintiff, in support of his submissions, relied upon the following authorities:
S.No. Citation
1. Colgate Palmolive Company and Another Vs. Anchor Health and Beauty Care Pvt. Ltd. reported in 2003 (27) PTC 478 (Del)
2. Indian Shaving Products Ltd. & Another Vs. Gift Pack and Another reported in 1998 SCC Online Del 829
3. ITC Limited Vs. Britannia Industries Ltd reported in MANU/TN/6267/2023
4. N.Ranga Rao and Sons Vs. Anil Garg and Others reported in 2006 (32) PTC 15(Del)
5. M/s.Power Control Appliances & Ors. Vs. Sumeet Machines Pvt. Ltd. reported in 1994 (2) SCC 448
6. Midas Hygiene Industries & Anr. Vs. Sudhir Bhatia & Ors reported in 2004 (3) SCC 90
18. Relying upon the aforesaid decisions, the learned counsel for https://www.mhc.tn.gov.in/judis 13/41 C.S.(Comm. Div.)No.270 of 2019 the plaintiff further submits as follows:
a) If a gullible consumer gets confused as to the source and origin of the product under dispute, arising from the visual impression and colour combination, shape of the container, it amounts to passing off with the intention to encash on the reputation and goodwill of the original product. For a passing off claim, it is the similarities and not the dissimilarities of a product that are to be considered;
b) Usage by third parties of a given trademark is no defence to passing-off, nor does it entail that the mark has become publici juris;
c) The use of a near-exact colour scheme for the product leads to the inference of dishonest adoption by the subsequent user of the mark.
The presence of wholly different brand name does not dilute an action of passing-off for trade dress;
d) While there is no right to a single colour, the use of a colour combination and the arrangement of the same on a box would be of significance in determination of passing off. The second-comer to the market has a duty to name and dress his product so as to avoid the likelihood of confusion;
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e) Acquiesce implies positive acts and not just silence or inaction. The Plaintiff should give a "positive license" to the Defendant and keep the Defendant in ignorance of the Plaintiff's rights for a complete defence of acquiescence. Mere inaction will come within the meaning of "latches";
f) Delay in bringing action in a trademark case is not sufficient to defeat the grant of injunction. Injunction becomes necessary if it prima facie appears that the adoption of the mark was dishonest.
19. On the other hand, the learned counsel for the defendant would submit as follows:
a) The defendant is having a valid trademark registration for their logo "Muthoos" eversince 2009. The plaintiff has also not challenged the said trademark registration till date as per the provisions of the Trademarks Act. Having not challenged the same as per the provisions of the Trademarks Act, the present suit is not maintainable;
b) The suit is barred by limitation under Order VII Rule 1 of C.P.C.
read with Sections 27, 134 and 135 of the Trademarks Act, 1999. The defendant obtained the trademark registration for their trademark "Muthoos" as well as its logo in the year 2009; https://www.mhc.tn.gov.in/judis 15/41 C.S.(Comm. Div.)No.270 of 2019
c) The plaintiff through their lawyer, by name, Joseph Varikasery, issued a legal notice to the defendant on 03.09.2011 (Ex.D21), calling upon the defendant to cease and desist from using the logo of the plaintiff in respect of its trademark "Hincol". However, the plaintiff did not choose to initiate a copyright infringement and passing off action, immediately pursuant to the said cease and desist notice. The present suit being filed only in the year 2019, the suit is barred by limitation as even according to the plaintiff, the cause of action arose in the year 2011 itself as seen from the cease and desist notice dated 03.09.2011 (Ex.D21).
d) The logo of the defendant is completely different from the plaintiff's logo. The defendant's logo is rectangular in nature which contains quadrilateral in yellow with black line around it and words "Muthoos". Therefore, the logo of the defendant is not deceptively similar to that of the plaintiff's logo. There is a tag line "we open the way" in the plaintiff's logo, whereas, such a tag line is not there in the defendant's logo.
e) The trademark of the defendant "Muthoos" and its logo is registered under the Trademarks Act, 1999 in the year 2009 itself.
f) In view of the absence of any copyright registration in respect of any artistic work and style by the plaintiff, the plaintiff cannot invoke the https://www.mhc.tn.gov.in/judis 16/41 C.S.(Comm. Div.)No.270 of 2019 provisions of Sections 51, 53, 54 and 62 of the Copyright Act to prevent the defendant from in any way manufacturing, distributing, selling "bitumen emulsion" in the name and style of Muthoos;
g) As per Section 17 of the Trademarks Act, the trademark registration shall not confer any exclusive right in the manner forming part or the whole of the registered trademark;
h) Section 33 of the Trademarks Act contemplates that if the proprietor of an earlier trademark has acquiesced for a continuous period of five years in the use of the registered trademark being aware of the use, he shall no longer be entitled on the basis of the earlier trademark to apply for a declaration with the registration of the later trademark is invalid;
i) The plaintiff registered its trademark in the year 1996 and the defendant registered their trademark only in the year 2009. Having allowed the defendant to use their trademark for more than a period of ten years, the present suit filed by the plaintiff is hit by the provisions of Section 33 of the Trademarks Act and therefore, liable to be dismissed;
j) There is no phonetic, visual or structural similarity between the trademark of the plaintiff and the trademark of the defendant. The logo of the plaintiff's trademark and the defendant's trademark are totally https://www.mhc.tn.gov.in/judis 17/41 C.S.(Comm. Div.)No.270 of 2019 different and it will not create any confusion in the minds of the general public as to who the product belongs;
20. The defendant has filed several invoices which have been marked as exhibits to prove that they have been doing their business continuously without any break. The plaintiff is therefore not entitled to seek the relief as sought for in the plaint.
21. The learned counsel for the defendant in support of his submissions relied upon the following authorities:
S.No. Citation
1. Cipla Limited Vs. M.K.Pharmaceuticals, MIPR reported in 2007 SCC Online Del 2012
2. Kellogg Company Vs. Pravin Kumar Bhadabhai and Anr.
reported in 1996 (36) DRJ 509 (DB)
3. Hatsun Agro Products Ltd., Vs Arokiya Foods reported in MANU/TN/6029/2022
4. Wal-Mart Stores, Inc., Vs. Samara Brothers, Inc., reported in 529 U.S. 205 (2000)
22. Relying upon the aforesaid decisions, the learned counsel for the defendant would submit as follows:
a) The distinctiveness of the product is in the name and not in the https://www.mhc.tn.gov.in/judis 18/41 C.S.(Comm. Div.)No.270 of 2019 colour and shape. Even if assuming that there has been deliberate copying of similar colour and shape of the plaintiff's product, that would not amount to passing off, since colour and shape are not indicative of the product neither are they associated with the trademark;
b) The trade dress must be seen in its entirety and not seen in parts or in isolation;
c) The strength of the prior mark, the degree of identity or similarity of the marks, the segment of the prior mark, the degree of identity or similarity of the marks, the segment or class of consumers or potential consumers; retail environment, circumstances in which the later mark was adopted, etc., would have a bearing on likelihood of confusion, if the goods or service are similar and on the grant of discretionary relief;
d) Trade dress involves total image of a product and "may include features such as size, shape, colour combinations, texture, or graphics.
Trade dress protection is broader in scope than trademark protection, both because it protects aspects of packaging and product design that cannot be registered for trademark protection and because evaluation of trade dress infringement claims requires the Court to focus on the plaintiff's entire selling image, rather than the narrower single facet of the trademark;
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e) Both under the Trademarks Act, 1999 and under the Copyright Act, 1957, the exclusive right to use a particular colour cannot be claimed. Nobody can claim any proprietory right over the colour blue.
Discussion:
23. The doctrine of passing off is based on the principle that no one has the right to represent one's goods as the goods of the other. To obtain the remedy of passing off, the plaintiff has to prove that he is the owner of the mark and the same has gained the reputation and goodwill and misrepresentation has been done by the defendant, due to which the plaintiff has suffered damages. The passing off action is regarded as an action of deceit.
24. The characteristics of passing off is discussed in various decisions including the decisions relied upon by both the counsels. In one of the leading English decisions rendered by Lord Diplock in Erven Warnik Vs. Townend reported in 1979 (2) All ER 927 discussed and explained the characteristics of passing-off. As per the said decision, to prove passing off, the plaintiff will have to prove
a) misrepresentation;
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b) Made by a person in course of trade;
c) To prospective consumers of his or ultimate consumers of goods or services supplied by him;
d) Which was calculated to injure business or goodwill of another trade (in the sense that this is reasonably foreseeable consequence); and
e) Which caused actual damage to a business or goodwill of a trader by whom the action was brought, or in a quia timet action would probably do so.
25. There are three main elements to the tort of passing off as held in another leading English decision of Harrods Vs. Harrodian School reported in (1996) RPC 698 which are as follows:
a) Reputation;
b) Deception; and
c) Damage.
26. In the case of Reckitt & Colman reported in (1990) RPC 341, it was stated that according to the law of passing off, no man could pass off his goods as those of another. Firstly, goodwill has to be established or the reputation attached to the goods or services, which he supplies in https://www.mhc.tn.gov.in/judis 21/41 C.S.(Comm. Div.)No.270 of 2019 the mind of purchasing public by association with the identifying "get up"
under which his particular goods and services are offered to the public as distinctive specifically of the plaintiff goods and services. Secondly, he must demonstrate the misrepresentation by the defendant to the public leading or likely to lead the public into believing that goods or services offered by him are goods and services of the plaintiff. Thirdly, he must demonstrate that he suffers or likely to suffer damage by reason of erroneous belief engendered by the defendant's misrepresentation that the source of defendant's goods or services is the same as the source of those offered by the plaintiff. There are two necessary elements, first a misrepresentation expressed or implied but not necessarily fraudulent and the second a consequent likelihood of damage to the plaintiff's goodwill.
27. The three elements of passing off viz., the reputation of the goods, possibility of deception and likelihood of damage have also been approved by the Honourable Supreme Court in the case of Laxmikant V. Patel Vs. Chetanbhat Shah reported in AIR 2002 SC 275.
28. Section 27 of the Trademarks Act, 1999 stipulates as follows:
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a) No person shall be permitted to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark;
b) Nothing in the Trademarks Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof;
29. Clause (2) of Section 27 of the Trademarks Act preserves the rights and remedies of a prior user. It states that even if an application for the registration of trademark has been filed by the subsequent user and the subsequent user has got registration of the trademark, even then the prior user can file an action for passing off as per Section 27 (2) of the Trademarks Act. However, the plaintiff, in order to prove passing off, will have to satisfy the trinity tests namely
a) Reputation;
b) Deception; and
c) Damage.
30. In the case on hand, we shall now examine as to whether the https://www.mhc.tn.gov.in/judis 23/41 C.S.(Comm. Div.)No.270 of 2019 plaintiff has satisfied the trinity tests viz.,
a) Reputation;
b) Deception; and
c) Damage for the purpose of proving passing off against the defendant and for obtaining the reliefs sought for in the plaint.
31. The suit for passing off has been filed against the defendant on the ground that the defendant has adopted the appearance, get up and shape disclosed in the plaintiff's registered label in respect of its trademark "Hincol". According to the plaintiff, eventhough, the defendant is using the trademark "Muthoos Enterprises", the defendant has blatantly copied the plaintiff's logo / label and therefore, the logo / label of the defendant is deceptively similar to that of the plaintiff's logo / label.
32. The product, which both the plaintiff and the defendant are dealing with, is "bitumen emulsion". It is a product purchased by customers who are either seasoned civil contractors or persons who buy the same on the advice of experienced civil contractors. It is not a product purchased based on the get up and the trade dress of its label, but, it is https://www.mhc.tn.gov.in/judis 24/41 C.S.(Comm. Div.)No.270 of 2019 purchased based on the brand name. The packaging of the plaintiff's barrels that contain the plaintiff's "bitumen emulsion" are black in colour with the "Hincol" logo emblazoned in the centre along with the diamond shape in yellow surrounding the "Hincol" logo. The defendant's trademark is "Muthoos". The plaintiff's grievance is that the defendant has copied the aforementioned trade dress / logo of the plaintiff. The trademark "Hincol" used by the plaintiff and the trademark "Muthoos" used by the defendant are both registered trademarks. Admittedly, eventhough the suit has been instituted before this Court in the year 2019 itself, till date, the plaintiff has not exercised its statutory remedy under the Trademarks Act, seeking for rectification of the defendant's trademark "Muthoos" and its trade dress. The defendant has also been using, without interruption for the past several years, the trademark "Muthoos" for its product "bitumen emulsion".
33. Eventhough, the plaintiff may claim that the defendant has copied the plaintiff's trade dress, this Court notices several dissimilarities between the trade dress of the plaintiff and the trade dress of the defendant.
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34. The dissimilarities noticed by this Court are as follows:
BASIS HINCOL MUTHOOS
REGISTERED
MARKS
FONT ● Gotham light and Letter "M", S" is used in
medium (NB:Juxtapose upper case whereas the the exact font which was remaining letters are used used in colas france) in lower case font.
● Every letter is used in upper case font.
SIZE Every other letter in the above The letter "M, T, H, S"
mentioned 1st image is similar are used in a same height whereas in the 2nd image the whereas the letter "U, T, letter "H & L" is comparatively O" is comparatively larger compared to the other smaller with that of other. letters.
COLOUR Classic yellow with black fonts. In a Black rectangle box, The fonts alone is used in the the word mark is used in logo which is evidence that only black font and in one colour stands independently circumference of yellow when it is applied to the product. rhombus.
SOUND No phonetic similarity. No phonetic similarity as to words muth+oos SHAPE Elongated quadrilateral as their Depicted their registered registered trademark amid and trademark inside a additionally claiming the rectangle box. To adduce rhombus design with 2 parallel their name, they used the sided 'V' (>) lines as their diamond shape which is derived artistic shape. Whilst, the making it clear that the fact concerned is that the shape is defendant have traded obtained correlating to their joint fairly.
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C.S.(Comm. Div.)No.270 of 2019
BASIS HINCOL MUTHOOS
venture colas France .
VISUAL Comparing one with the another, To sum up, the design is
IMPRESSION the hincol is nowhere related similar, however people
with that of Muthoos. may not look into the
design perspective, they
dive into the price and
quality index, regardless
of what colour and shape
they comprise of. The
impugned trademark as
nowhere relevance with
the Hincol, as the name
"MUTHOOS" is itself
have gained their own
customer since they are
trading in the concerned
field for more than 13
years.
TAGLINE 1)WE OPEN THE WAY No Tagline hence no
2)BETTER ROADS, BETTER deceptive similarity.
WAY RANGE OF Passing off and compensation No such similarity found IMITATION claim can be due course given between the two products, importance if it has been proved even though the product by the plaintiff that there's evolves between the road existence of fraudulent or construction business. obvious imitation by the The plaintiff had never defendant. It is to be noted that imitated the words or the the principle of caveat venditor design they are using. So applies in the present scenario. no claim for passing off. ARTISTIC SEGREGATION The design is much more involving since it has two combination of shapes which is actually if we segregate the entire logo to combined altogether. The check whether there is an trade dress what they original artistic work, it is clear have registered is been used in every other https://www.mhc.tn.gov.in/judis 27/41 C.S.(Comm. Div.)No.270 of 2019 BASIS HINCOL MUTHOOS that the design is basically a barrels they produce. If rhombus design which is we look deeply into the elongated both the sides to make design, the device it reciprocate with the two actually forms a "VEL" -
arrows (>). a tool of Hindu lord
Murugan which in turn
forms a secondary
meaning since it acceded
to the respondent name
"velmurugan".
Subsequently, the device
have obtained an acquired
The above diagram is given in distinctiveness. order to ascertain the fact, it is not an original work which is there forth made by using dedicating strenuous efforts, labour and time which are also GEOMETRIC SHAPRES NOT PROTECTED UNDER COPYRIGHTS CANNOT CLAIM MONOPOLY PACKAGING In the above mentioned barrel, In the above barrel, the the colour is coordinated in such respondent have used the a way to enumerate the logo to logo in a equitable way the customer and the tag line for which he claimed to they have used during the sale, is be doing earlier. totally different from that of what they have claimed.
The colour what they have claimed during the registration is altered simultaneously.
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35. Under the Copyright law, a simple shape or one that is commonly used cannot be copyrighted on its own. The plaintiff in its plaint has alleged that the defendant has adopted the mark "Muthoos" to market its product, but, has, however, copied the colour scheme of black and yellow, get up containing the yellow in diamond shape and layout of the plaintiff. However, the defendant's trademark "Muthoos" is also a registered trademark and its trademark has also been registered.
36. This Court also notices various dissimilarities between the plaintiff's label and the defendant's label and the dissimilarities have already been highlighted supra.
37. A gullible consumer will have to get confused as to the source and origin of the product under dispute. The defendant is having a valid trademark registered for the logo "Muthoos", admittedly, since 2009. The plaintiff has also not challenged the said trademark registration, till date, exercising their statutory remedy available under the Trademarks Act.
38. The defendant has obtained the trademark registration for the https://www.mhc.tn.gov.in/judis 29/41 C.S.(Comm. Div.)No.270 of 2019 trademark "Muthoos" as well as its logo in the year 2009. The present suit was filed by the plaintiff in the year 2019, eventhough, the trademark registration was obtained by the defendant for its trademark "Muthoos" and its logo in the year 2009 itself.
39. The plaintiff through their lawyer by name Mr.Joseph Varikasery, issued a legal notice to the defendant on 03.09.2011 (Ex.D21), calling upon the defendant to cease and desist from using the logo of the plaintiff in respect of its trademark "Hincol". However, the plaintiff did not chose to initiate infringement of copyright action immediately pursuant to the said cease and desist notice, but has chosen to file the present suit only in the year 2019. When the defendant has proved through its oral and documentary evidence that the plaintiff had issued a cease and desist notice to the defendant on 03.09.2011 (Ex.D21), it can be held that the suit is barred by limitation since the cause of action for filing the suit arose in the year 2009 itself, whereas, the suit was filed only in the year 2019.
40. Passing off action is a common law remedy. Therefore, the Limitation Act applies and since the suit has been filed three years after https://www.mhc.tn.gov.in/judis 30/41 C.S.(Comm. Div.)No.270 of 2019 the cause of action arose, the same is barred by limitation. As seen from the comparison chart between the plaintiff's get up and trade dress and the defendant's get up and trade dress, it is clear that the logo of the defendant is rectangular in nature which contains a quadrilateral in yellow with black line around it and the word "Muthoos". Therefore, considering the fact that the product "bitumen emulsion" will be purchased by customers not based on their get up / trade dress but based on the brand name, no person of average intelligence and imperfect recollection will get confused between the plaintiff's product and the defendant's product as the trademark of the plaintiff and the trademark of the defendant are totally different and also not deceptively similar. The get up and the trade dress of the defendant's logo / label is also totally different from that of the plaintiff and the plaintiff cannot also claim exclusive usage of a particular shape, which cannot be considered to be the creativity of the plaintiff.
41. Section 33 of the Trademarks Act contemplates that if the proprietor of the earlier trademark has acquiesced for a continuous period of five years in the use of a registered trademark being aware of the use, he shall no longer be entitled on the basis of the earlier trademark to https://www.mhc.tn.gov.in/judis 31/41 C.S.(Comm. Div.)No.270 of 2019 apply for a declaration that the registration of the later trademark is invalid. Admittedly, the defendant has obtained registration of its trademark and its trade dress in the year 2009 itself. The plaintiff has also been aware since they had issued a cease and desist notice in the year 2011 through their lawyer to the defendant (Ex.D21). The plaintiff has acquiesced for a continuous period of more than five years in the use of the registered trademark "Muthoos" and its trade dress. No application has also been filed as per the provisions of the Trademarks Act, 1999, seeking for rectification of the defendant's registered trademark. The concept of prior user, which the plaintiff has pleaded, will not apply to the fact of the instant case as the trademark of the plaintiff and the trademark of the defendant as well as their trade dress / get up are dissimilar which will never confuse the minds of any person of average intelligence and imperfect recollection.
42. Further, the product "bitumen emulsion" is a product which is purchased either by civil contractors themselves or by a persons of experience in construction or by persons, who are introduced to the particular brand by experienced persons in the construction field. There is also no phonetic, visual or structural similarity between the trademark of https://www.mhc.tn.gov.in/judis 32/41 C.S.(Comm. Div.)No.270 of 2019 the plaintiff and the trademark of the defendant. The defendant's have also filed several invoices, which have been marked as exhibits (Ex. D6 to D20 and Ex.24 to Ex.33), to prove that they have been using the same trademark and trade dress continuously without any break.
43. No contra evidence has also been produced by the plaintiff to disprove the defendant's contention that they are using the trademark and trade dress / get up eversince 2009 when the defendant's trademark and its logo was registered under the Trademarks Act. The colour and shape are not indicative of the product, which in the instant case is "bitumen emulsion". The trade dress must be seen in its entirety, i.e., as a whole and not seen in parts / isolation, while deciding the suit for passing off. While deciding the suit for passing off, the strength of the prior mark, the degree of identity or similarity of the marks, the segment of the prior mark, the segment or class of consumers or potential consumers; retail environment, circumstances in which the later mark was adopted, etc., would have a bearing on likelihood of confusion in the minds of the general public at large.
44. In the case on hand, after giving due consideration to the https://www.mhc.tn.gov.in/judis 33/41 C.S.(Comm. Div.)No.270 of 2019 aforementioned factors, this Court is of the considered view that the plaintiff has not satisfied the tests for passing off as the trademark of the defendant and its logo / label would not amount to misrepresentation on the part of the defendant. Though, the plaintiff is having a reputation for its trademark "Hincol", it cannot be said that the defendant has damaged the plaintiff's reputation in view of the fact that the defendant's trademark and its trade dress / get up are totally different from the plaintiff's trademark / trade dress.
45. The plaintiff will have to satisfy the trinity tests for the purpose of proving passing off by the defendant viz.,
a) Reputation;
b) Deception; and
c) Damage.
The plaintiff has miserably failed to satisfy the trinity tests.
46. The Judgments relied upon by the learned counsel for the plaintiff, which have been referred to supra, have been rendered in cases where the party, who has instituted the passing off action, has satisfied the trinity tests viz., https://www.mhc.tn.gov.in/judis 34/41 C.S.(Comm. Div.)No.270 of 2019
a) Reputation;
b) Deception; and
c) Damage.
Whereas, in the case on hand, the trinity test has not been satisfied by the plaintiff. Therefore, the decisions relied upon by the learned counsel for the plaintiff has no applicability for the facts of the instant case.
47. On the contrary, the decisions relied upon by the learned counsel for the defendant, referred to supra, would apply since there is no deceptive similarity between the plaintiff's trademark / trade dress / get up and the defendant's trademark / trade dress / get up, which will confuse the minds of any persons of average intelligence and imperfect recollection. Further, the product concerned, viz., "bitumen emulsion"
being purchased only by persons experienced in civil construction or by persons who have been asked to buy a particular brand name by experienced persons in the field, the question of deceit based on trade dress / get up will not arise.
48. For the foregoing reasons, the issues framed by this Court are answered against the plaintiff by holding, with regard to issue No.1, that https://www.mhc.tn.gov.in/judis 35/41 C.S.(Comm. Div.)No.270 of 2019 the defendant has not infringed the plaintiff's copyright in the "Hincol" label by using an identical or deceptively similar label or packaging in their "Muthoos" label and the issue No.2 is also answered against the plaintiff by holding that the defendant has not adopted the identical trade dress of the plaintiff's label and there is no act of passing off. In view of the findings rendered by this Court that the defendant has not committed the act of passing off, the damage claim made by the plaintiff is rejected by this Court.
49. In the result, this Court does not find any merit in this Suit. Accordingly, the Suit is dismissed. No Costs.
12.01.2024 Index: Yes/ No Speaking order / Non speaking order Neutral citation : Yes / No ab https://www.mhc.tn.gov.in/judis 36/41 C.S.(Comm. Div.)No.270 of 2019 https://www.mhc.tn.gov.in/judis 37/41 C.S.(Comm. Div.)No.270 of 2019 List of Witness examined on the side of the Plaintiff:-
Mr.Subin Punnoose (PW1) List of the Exhibits marked on the side of the Plaintiff:-
Exhibit Nature of Documents Date
No.
P1 Notarized copy of power of attorney 10.04.2017
P2 Certified copy of registration of trademark 02.08.2000
registered under No.944421 in class 19
P3 Certified copy of registration of trademark 02.07.2017
registered under No.3595445 in class 19
P4 Copies of invoices making use of the plaintiff's
mark
P5 Quality Control certificate granted to the plaintiff
P6 Copies of advertisements issued by plaintiff
making use of the HINCOL brand
P7 Copies of brochures issued by plaintiff making
use of the HINCOL brand
P8 Cease and desist notice issued by the plaintiff to 23.01.2019
defendant
P9 Defendant's reply 03.02.2019
P10 Plaintiff's HINCOL product
P11 Defendant's MUTHOOS product
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List of Witness examined on the side of the Defendant:-
Mr.M.Velmurugan (DW1) List of the Exhibits marked on the side of the Defendant:-
Exhibit Nature of Documents Date
No.
D1 Registration Certificate of TM No.2048921 02.11.2010
D2 Letter issued by TN Pollution Control Board 01.11.2016
D3 EQFS Certification
D4 Acknowledgment issued by Government of TN 30.08.2010
D5 Certificate issued by Ministry of Commerce and 27.06.2012
Industry
D6 Tax Invoice 16.10.2012
D7 Tax Invoice 12.03.2013
D8 Tax Invoice 28.05.2013
D9 Tax Invoice 01.10.2015
D10 Tax Invoice 09.10.2015
D11 Tax Invoice 06.05.2016
D12 Tax Invoice 01.03.2017
D13 Tax Invoice 04.07.2017
D14 Tax Invoice 13.07.2017
D15 Tax Invoice 08.01.2018
D16 Tax Invoice 08.01.2018
D17 Tax Invoice 04.12.2018
D18 Tax Invoice 28.12.2018
D19 Tax Invoice 02.04.2019
D20 Tax Invoice 09.04.2019
D21 Copy of notice 03.09.2011
D22 Legal use certificate of TM No.2048921 02.11.2010
D23 Purchase Bills --
D24 Tax Invoice 11.05.2012
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C.S.(Comm. Div.)No.270 of 2019
Exhibit Nature of Documents Date
No.
D25 Tax Invoice 12.05.2016
D26 Tax Invoice 15.07.2016
D27 Tax Invoice 21.06.2017
D28 Tax Invoice 09.04.2018
D29 Tax Invoice 09.06.2018
D30 Tax Invoice 15.12.2021
D31 Tax Invoice 12.04.2017
D32 Tax Invoice 30.07.2022
D33 Tax Invoice 06.09.2022
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ab
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C.S.(Comm. Div.)No.270 of 2019
ABDUL QUDDHOSE, J.
ab
Pre-delivery judgment in
C.S.(Comm. Div.)No.270 of 2019
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