Madras High Court
M/S.Mrf Limited vs Multi Race Force Lubricants Pvt. Ltd on 8 November, 2018
Author: M.Sundar
Bench: M.Sundar
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 08.11.2018
CORAM
THE HON'BLE MR.JUSTICE M.SUNDAR
C.S.No.258 of 2017
and O.A.Nos.362 & 363 of 2018
and A.Nos.1581 to 1583 of 2018
M/s.MRF Limited,
Having registered Office at
No.114, Greams Road,
Chennai 600 006, represented by its
Company Secretary
Mr.Ravi Mannath. ..Plaintiff
Vs.
Multi Race Force Lubricants Pvt. Ltd,
Having its Registered office at
62, Anandpur, Near Bus Stand
Mandi Road, Mathura-281 004
Also having Corporate office at
B-5, KishanGarh,
Maharoli, Ward No.2,
New Delhi. .. Defendant
This Civil Suit is preferred, under Order IV Rule 1 Original Side Rules
and Sections 28,29,134 and 135 of the Trade Marks Act, 1999, praying to
A) A perpetual injunction restraining the first Defendant, its
distributors, stockists, servants, agents, retailers, representatives or any
other person claiming under/through them, from in any manner infringing
the Plaintiff's Registered Trade Marks 'MRF', by manufacturing, marketing,
using as a domain name/ webpage or part thereof and/or using or displaying
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on a website/webpage the Trade Mark 'MRF', which are identical with
and/or deceptively similar to the Plaintiff's trademark 'MRF', in connection
with the defendant's goods/services and/or business, as a trademark or
trade name or internet domain name or keyword or adword, tag, meta tag,
html code, file name, social media user name/id or to identify in location
services including google maps or part thereof or in any other manner
whatsoever;
B) A perpetual injunction restraining the Defendants, its
distributors, stockists, servants, agents, retailers, representatives or any
other person claiming under/through it from in any manner associating
themselves with the Plaintiff or its business by using the trademark/trade
name MRF or any other trademark/trade name which is identical with or
deceptively similar to the plaintiff's trademark MRF either as a trademark or
trade name or internet domain name or keyword or adword, tag, meta tag,
html code, file name, social media user name/id or to identify in location
services including google maps or part thereof or in any other manner
whatsoever so as to pass off the Defendant's website/goods/services and
business and/or business, as that of the plaintiff' and wrongfully associate
themselves with the plaintiff' business or in any other manner whatsoever;
C) A preliminary decree be passed in favour of the plaintiff directing
the Defendant to render account of profits made by use of Trade Mark MRF,
as a brand name, domain name, keyword, adword, tag, meta tag, html code
or in any other manner, 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 has rendered accounts;
D) The first Defendant be ordered and decreed to pay to the 1 st
Plaintiff a sum of Rs.25,01,000/- as damages for acts of infringement and
passing off committed by the Defendant;
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E) For costs of the suit; and
F) Pass such further or other order or orders as this Hon'ble Court
may deem fit and proper in the facts and circumstances of the case and
thus render justice.
For Plaintiff : Mr.Harshavadhan
For Defendant : Set ex-parte
JUDGMENT
Instant suit was presented in this Court on 27.03.2017.
2. There is a sole plaintiff and a lone defendant in the main suit.
3. Instant suit has been filed with a complaint of infringement of plaintiff's trademark 'MRF'. There is also a prayer for injunctive relief qua passing off in the light of defendant using internet domain name, keyword, adword, HTML Code, file name etc.,
4. Prayer paragraph consists of six limbs and the prayer paragraph reads as follows:
'In these circumstances, it is most humbly prayed that this Hon'ble Court may be pleased to pass a judgment and decree for:
http://www.judis.nic.in 4 A) A perpetual injunction restraining the first Defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through them, from in any manner infringing the Plaintiff's Registered Trade Marks 'MRF', by manufacturing, marketing, using as a domain name/ webpage or part thereof and/or using or displaying on a website/webpage the Trade Mark 'MRF', which are identical with and/or deceptively similar to the Plaintiff's trademark 'MRF', in connection with the defendant's goods/services and/or business, as a trademark or trade name or internet domain name or keyword or adword, tag, meta tag, html code, file name, social media user name/id or to identify in location services including google maps or part thereof or in any other manner whatsoever;
B) A perpetual injunction restraining the Defendants, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through it from in any manner associating themselves with the Plaintiff or its business by using the trademark/trade name MRF or any other trademark/trade name which is identical with or deceptively similar to the plaintiff's trademark MRF either as a trademark or trade name or internet domain name or keyword or adword, tag, meta tag, html code, file name, social media user name/id or to identify in location services including google maps or part thereof or in any other manner whatsoever so as to pass off the Defendant's website/goods/services and business and/or business, as that of the plaintiff' and wrongfully associate themselves with the plaintiff' business or in any other manner whatsoever;
C) A preliminary decree be passed in favour of the plaintiff directing the Defendant to render account of profits http://www.judis.nic.in 5 made by use of Trade Mark MRF, as a brand name, domain name, keyword, adword, tag, meta tag, html code or in any other manner, 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 has rendered accounts;
D) The first Defendant be ordered and decreed to pay to the 1st Plaintiff a sum of Rs.25,01,000/- as damages for acts of infringement and passing off committed by the Defendant;
E) For costs of the suit; and F) Pass such further or other order or orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the case and thus render justice.'
5. At the time of inception of suit, interlocutory applications were taken out, interim orders were granted, sole defendant entered appearance and filed vacate interim application, but did not pursue the same. Written statement was not filed in the main suit and ultimately, the sole defendant was set ex-parte on 20.09.2018.
6. After being set ex-parte, this matter was sent to learned Additional Master-III for recording ex-parte evidence and ex-parte evidence was recorded on 30.10.2018. As many as 15 documents were marked as Exs.P1 to P15 and the details of the same are as follows:
Exhibit Description
No
Ex.P1 Original of the letter of authorization dated 18.10.2018.
Ex.P2 Photocopy of the certificate of legal use and
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Exhibit Description
No
Registration of the Trade Marks together with the certificate of renewal of the marks of plaintiff. Ex.P3 Photocopy of the certificate of legal use and Registration of the Trade Marks in 79 countries. Ex.P4 Original of Charactered Accountant's certificate showing the sales turnover and expenditure on advertisement Ex.P5 Photocopy of sample invoices for the sale of Tyres by the plaintiff under the trademark MRF and the list of countries to which the MRF tyres are exported Ex.P6 Photocopy of some of the awards received by plaintiff Ex.P7 Photocopy order secured by plaintiff in respect of its trade mark MRF Ex.P8 Photocopy of the infringing trade mark and the connected logo Ex.P9 Photocopy of screen shot of the defendant's website Ex.P10 Original legal notice dated 06.01.2016 along with acknowledgment card Ex.P11 Original legal notice dated 08.06.2016 along with acknowledgment card Ex.P12 Photocopy of screen short of the google search for that term MRF Lubricant Ex.P13 Photocopy of print out sample of web pages of defendant's website along with the corresponding html code used in the website Ex.P14 Photocopy of description given by 1st defendant in respect of some its products on its website Ex.P15 Photocopy of search result showing the defendant's location
7. One Mr.George Samuel, who has been described as a Senior Manager-Sales & Planning of the plaintiff company has deposed as P.W.1. http://www.judis.nic.in 7
8. Today, this matter was listed before me under the caption 'FOR ARGUMENTS'.
9. Before proceeding further in the matter, it is necessary to notice that jurisdiction of this Commercial Division qua this suit was determined on 25.01.2018 and those proceedings read as follows:
'Mr.Madhan Babu, learned counsel on record for the sole plaintiff is before this Commercial Division. Mr.S.Muthiah, learned counsel on record for the sole defendant is before this Commercial Division.
2. Both the learned counsel make common submissions in unison that this suit pertains to alleged infringement of a registered Trademark. There is also a prayer qua passing off.
Both the learned counsel further submit that in the light of the subject matter of the suit, particularly in the light of the prayers in the plaint, Section 134(1) of Trademarks Act, 1999 (hereinafter referred to as 'TM Act' for brevity) operates. As Section 134(1) of TM Act operates, this Commercial Division will have jurisdiction under first proviso to Section 7 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (4 of 2016) (hereinafter referred to as 'Act 4 of 2016' for brevity) is their further submission. As this is a suit for alleged infringement of trademark, in the light of Section 134(1) of TM Act, 'specified value' aspect (as in Section 2(1)(i) read with Section 12 of Act 4 of 2016) is of no relevance is also their say. These are the common submissions made by both counsel in unison.
3. I have perused the plaint and as set out supra, I have also heard the common submissions of both the learned http://www.judis.nic.in 8 counsel. After perusing the plaint averments, I am satisfied that the common submissions made by both the learned counsel deserve to be accepted. I accept the aforesaid common submissions and hold that this Commercial Division shall exercise jurisdiction over this suit in the light of first proviso to Section 7 of Act 4 of 2016. To be noted, this is an expression of intention to exercise jurisdiction by this Commercial Division qua this suit and the jurisdiction is otherwise inherent.
4. Now that this Commercial Division is exercising jurisdiction over this suit, I turn to the stage of the suit.
5. I am informed that pleadings are yet to be completed. Learned counsel for the defendant seeks time to file written statement. Exercising jurisdiction of this Commercial Division under first proviso to Section 15 (4) of Act 4 of 2016, 30 days time is granted to the defendant to file written statement and complete their pleadings. In other words, the defendant shall file written statement on or before 26.02.2018. To be noted, the defendant shall serve advance copy of the written statement together with all supporting documents on the learned counsel for the plaintiff.
6. List this matter on 27.02.2018. To be noted, separate date is given in the interlocutory applications.'
10. It is submitted by Mr.Harsavadhan, learned counsel for plaintiff that though plaintiff has several trademark registrations and a huge reputation, what is of utmost relevance for the instant suit is a trademark registration bearing No.726535, dated 08.05.1996 in Class 4. Trademark registration certificate has been marked as part of Ex.P2 and the products, http://www.judis.nic.in 9 for which registration has been granted are as follows:
'Industrial Oils and Greases (other than Edible Oils and Fats and Essential Oils), Lubricants, Dust Laying and Absorbing Compositions, Fuels (including Motor Spirit) and Illuminans, Candles, Tapers, Nightlights and Wicks included in Class 04.'
11. Plaintiff's mark is as follows:
12. It is a case of learned counsel for plaintiff that on coming to know about the use of an identical mark by the defendant in the same products i.e., lubricants, primarily, a Cease and Desist notice dated 06.01.2016 was issued and the same has been marked as Ex.P10 along with acknowledgment card.
13. To be noted, the alleged infringing mark and the connected logo used by defendant has been marked as Ex.P8 and the same is as follows:
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14. After receipt of aforesaid Cease and Desist notice dated 06.01.2016 (Ex.P10), learned counsel for plaintiff submits that, defendant stopped using the mark and the logo, but the meta-data continued to be used, resulting in another Cease and Desist Notice dated 08.06.2016 being issued. This shall be referred to as 'second Cease and Desist Notice'. The second Cease and Desist Notice dated 08.06.2016 along with postal acknowledgment card has been marked as Ex.P11.
15. Infringement qua meta-data continued unabated, notwithstanding Ex.P11, necessitating the presentation of the instant suit in this Court on 27.03.2017, is learned counsel for plaintiff's say. This aspect of the matter has been articulated in paragraph 21 of the plaint and paragraph 21 of the plaint reads as follows:
'It may be relevant to state herein that the defendant's intention to ride on the plaintiff's reputation has been http://www.judis.nic.in 11 apparent. In fact, after receipt of the legal notices from the plaintiff, the first defendant continued to maintain the domain name/URL www.mrflubricants.com. As and when the said URL was typed on the internet browser, rather than given an error message, the same was redirecting the user to the first defendant's new webpage/business at www.multiraceforce.com. Investigation undertaken by Plaintiff revealed that the new website/domain name/URL www.multiraceforce.com was registered by the defendant on 05.03.2016 after the receipt of the legal notice from the Plaintiff and conscious steps were taken by the defendant to ensure that the infringing domain name/URL is kept www.mrflubricants.com and all traffic to such website/webpage is redirected to the defendant's new website under the domain name/URL www.multiraceforce.com. '
16. This now takes us to the deposition of P.W.1.
17. As mentioned supra, Mr.George Samuel, who has been described as Senior Manager-Sales & Planning of the plaintiff company has deposed as P.W.1 and a perusal of his deposition shows that it is cogent and convincing. It is synchronized with plaint pleadings. In other words, it buttresses and bolsters the pleadings in the plaint.
18. This takes us to the six limbs of prayers in the plaint prayer paragraph. As already mentioned supra, the alleged offending mark used by http://www.judis.nic.in 12 the defendant has been marked as Ex.P8 and the pivotal trademark registration of plaintiff i.e., Ex.P2 has been extracted/reproduced supra.
19. Plaintiff has proved it's case with regard to sub-paragraphs (A) and (B) of prayer paragraph and plaintiff is entitled to injunctive relieves as prayed for therein owing to the narrative supra. It follows as a sequitur that plaintiff is entitled prayer in sub-paragraph (C) of prayer paragraph. With regard to sub-paragraph (D) of prayer paragraph, no evidence has been let in about the quantum of damages and therefore, I am not inclined to accede to the prayer in sub-paragraph (D).
20. With regard to sub-paragraph (E), trajectory of the suit has been set out supra and considering the nature of the suit, I am of the view that plaintiff is entitled to costs and therefore sub-paragraph (E) of prayer paragraph is acceded to.
21. With regard to sub-paragraph (F), learned counsel for plaintiff Mr.Harshavadhan requested this Commercial Division to consider awarding exemplary/compensatory costs under Section 35-A of 'The Code of Civil Procedure, 1908' ('C.P.C.' for brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity) http://www.judis.nic.in 13
22. Post amendment of C.P.C. by said Act, sub-Section (2) of Section 35-A has been deleted, resulting in there being no financial cap/upper limit with regard to awarding of exemplary/compensatory costs.
23. Trajectory of this suit has already been set out supra.
24. Emphasize is on the submission that the defendant continued to use the meta data notwithstanding Ex.P10 (though they discontinued use of the mark and logo), necessitating issue of Ex.P11 followed by the presentation of this suit. Trajectory of the suit also reveals that the defendant after entering appearance and filing vacate interim order applications, has failed to proceed with the suit, necessitating/compelling the plaintiff to carry this suit to its logical end over a period of 1½ years including letting in of oral evidence and marking of exhibits in the aforesaid manner expending money, energy and effort.
25. I am convinced with the submission of learned counsel for plaintiff that this is a fit case for awarding compensatory costs under Section 35-A. Considering the trajectory and the nature of the matter, I am convinced that this is a fit case to award compensatory costs of Rs.5 lakhs.
26. Before parting with the case, I have to necessarily make a http://www.judis.nic.in 14 mention about trademark registration No.726535, which has been marked as part of Ex.P2. This is in class 4. Enumeration of goods, for which the certificate has been issued has been made in the said certificate and the same have been extracted supra. A perusal of the same reveals that while most goods are not found in Class 4 of the relevant schedule to the rules under Trademarks Act, Tapers and night lights are not found in class 4. In this regard my common order dated 26.10.2018 made in O.A.Nos.705 and 706 of 2018 and A.Nos.7190 and 7191 of 2018 in C.S.No.511 of 2018 will apply. I am not reiterating the same to avoid this judgment becoming verbose.
27. To be noted, comparison of the rival marks i.e., Ex.P2 and Ex.P8 has been made by me by applying the time honoured principle laid down in this regard in the celebrated judgment of Hon'ble Supreme Court in Parle Products (P) Ltd. Vs. J.P. and Co., [(1972) 1 SCC 618] and post test I am convinced that plaintiff has proved it's case of infringement of copyright and passing off.
28. To be noted, Parle principle has been subsequently affirmatively referred to by the Supreme Court in S.M.Dyechen Vs. Cadbury (India) reported in (2000) 5 SCC 573.
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29. Relevant paragraph in Parle judgment is paragraph No.9 and the same reads as follows:
'9.It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can essily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word “Gluco Biscuits” in one and “Glucose Biscuits” on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'.
http://www.judis.nic.in 16 After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it.'
30. Articulating little more on this i.e., as to how this Commercial Division applied the aforesaid litmus test, it can be set out that, I had seen the plaintiff's mark, took it away from the sweep of my eyes and little later, I saw the defendant's alleged offending mark. I asked myself the question as to whether a man of average intelligence with imperfect recollection and ordinary prudence will be lulled into the belief that what he is seeing now (alleged offending mark) is what he had seen earlier (plaintiff's mark). I have no hesitation in coming to the conclusion that the answer is in the affirmative. In other words, the answer is an emphatic 'YES'. It is on this basis that I had concluded that plaintiff has proved it's case and claim qua sub-paragraphs (A) and (B) supra.
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31. In the light of the narrative supra, suit is decreed on above terms [with the exception of sub-paragraph (D)] with costs and compensatory costs as adumbrated supra. Consequently, connected miscellaneous petitions are closed.
08.11.2018 Speaking order/Non-speaking order Index : Yes/No vsm http://www.judis.nic.in 18 M.SUNDAR, J.
vsm C.S.No.258 of 2017 08.11.2018 http://www.judis.nic.in