Madras High Court
M/S. Kaleesuwari Refinery Private Ltd vs M/S.Sri Ganeshmurugan Oil Industries on 12 October, 2023
Author: Abdul Quddhose
Bench: Abdul Quddhose
C.S. (COMM. DIV.) No.681 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 12.10.2023
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S. (COMM. DIV.) No.681 of 2019
M/s. Kaleesuwari Refinery Private Ltd.,
Represented by its Manager (Legal)
A. Saravanan ... Plaintiff
vs.
M/s.Sri Ganeshmurugan Oil Industries,
Seemandampalayam Road,
Vellakovil,
Tirupur District - 638 111. ... Defendant
Prayer : Plaint has been filed under Order IV Rule 1 of the O.S. Rules
r/w Order VII Rule 1 of C.P.C. Rules r/w Sections 134 and 135 of Trade
Marks Act, 1999 r/w Sections 61 & 62 of the Copyright Act, 1957.
praying to pass judgment and decree :
i) For a permanent injunction to restrain the Defendant, their men,
agents, associates and / or assignees or any person claiming rights from
them from infringing the plaintiff's registered Trade Mark "Gold
Winner" by using the offending Trade mark "GOLD KING" or any
mark or word deceptively similar to the aforesaid Trade Mark of the
Plaintiff's for any edible oil marketed by the defendant, their men, agents,
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C.S. (COMM. DIV.) No.681 of 2019
associates and / or assignees or any person claiming rights from the
defendant.
ii) For a permanent injunction to restrain the defendant its men,
agents, associates and / or assignees or any person claiming rights from
therein from passing-off their inferior product, as that of the Plaintiff's
"Gold Winner" edible refined sunflower oil by using the offending
words "GOLD KING" or any other words or mark and offending
packing Material and pouch deceptively similar to the Plaintiff's trade
mark "Gold Winner" and Trade dress for "Gold Winner".
iii) Permanent injunction restraining the Defendant from violating
the Plaintiff's Copyright in the artistic work used in the Plaintiff's
packing material / pouches used for packing refined edible sunflower oil
and bearing its reputed and well known registered Trademarks "Gold
Winner" by substituting the Trademark "Gold Winner" with the
offending words "GOLD KING" bearing same trade dress, colour
scheme and get up deceptively similar to that of the Plaintiff's colour
scheme and trade dress in the packing material / pouch bearing trade
Mark "Gold Winner".
iv) For preliminary decree directing the defendant to render true
account of profits made by the Defendant by using the aforesaid
offending label of "GOLD KING".
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C.S. (COMM. DIV.) No.681 of 2019
v) Directing the Defendant, its men, agents, assignees, dealers and
/ or retailers, distributors, to surrender to the plaintiff all offending pouch
/ packing material, label, advertising materials, hoarding, letter heads,
office stationary and all other material containing / bearing offending
mark / label "GOLD KING" with distinct colour scheme, get up or any
other mark visually or phonetically similar to the Plaintiff's trademark
"Gold Winner" label for destruction by an order of this Court;
vi) For erasure, removal or obliteration from all infringing goods,
materials or articles in the possession or control of the Defendant with
the offending mark / labels and pouches deceptively similar to the
Plaintiff's “Gold Winner” refined sunflower oil;
vii) To pay for the costs of the suit
For Plaintiff : Mr.Vijayan Subramanian
JUDGMENT
This suit has been filed for infringement and passing-off. The plaintiff claims to be a leading market leader in the refined sunflower oil (RSO) and edible oil sector. The plaintiff is having a registered Trade Mark by name “Gold Winner” and the said mark is also registered under the Copyrights Act. The logo of the plaintiff which is filed along with the plaint has also been registered under the Trade Marks Act, 1999.
https://www.mhc.tn.gov.in/judis 3/17 C.S. (COMM. DIV.) No.681 of 2019 The package of the plaintiff which has been filed along with the plaint has also been registered under the Trade Marks Act. The plaintiff's turnover as seen from the plaint is huge running to several crores of rupees. The plaintiff has registered its word mark “Gold Winner” under various classes, which is detailed hereunder and is also found in paragraph No.11 of the plaint.
Sl. No Date Trade Mark Description
No.
1 27.08.1993 605323 Gold Winner for “Sunflower
Oil”.
2 11.01.2002 1073117 Gold Winner for “Refined
Groundnut Oil”.
3 11.01.2002 1073118 Gold Winner for “Refined
Groundnut Oil”.
4 01.11.2002 1147963 Gold Winner for “Refined
Sunflower Oil”.
5 23.06.2003 1208513 Gold Winner for “Vanaspati”
6 23.06.2003 1208514 Gold Winner for “Vanaspati”
7 16.11.2005 1399086 Gold Winner for” Refined
Sunflower Oil”
Mark App# Class Status
Gold Winner 1147963 29 Registered
Gold Winner 1208515 29 Registered
Gold Winner 2320408 29 Registered
https://www.mhc.tn.gov.in/judis 4/17 C.S. (COMM. DIV.) No.681 of 2019 Gold Winner 2320409 29 Registered Gold Winner 2934010 29 Registered Gold Winner 2934031 29 Registered Gold Winner 2934030 29 Registered Gold Winner 2934032 29 Registered Vita Gold Winner 3289982 29 Registered Vita D3+
2. The plaintiff has also secured international Trade Mark registration for its mark “Gold Winner”, which is detailed hereunder and has also been extracted by the plaintiff in paragraph No.12 of the plaint :
Country Mark App# Class Status
Singapore Gold Winner T0526845F 29 Registered
Vanaspati
Singapore Gold Winner T0503379C 29 Registered
Singapore Gold Winner T0503792F 29 Registered
Singapore Gold Winner T0503796I 29 Registered
Malaysia Gold Winner 05021648 29 Pending
Malaysia Gold Winner 05020758 29 Pending
International Gold Winner 1234655 29 Registered
https://www.mhc.tn.gov.in/judis 5/17 C.S. (COMM. DIV.) No.681 of 2019 Application under Madrid Protocol US Gold Winner 4848593 29 Registered Australia Gold Winner 1674105 29 Registered
3. The advertisement cost has been furnished by the plaintiff in respect of the Trade Mark “Gold Winner” from the year 2002-03 to 2016-17, which is extracted in paragraph No.32 of the plaint which is reproduced hereunder :
Sales Details of Plaintiff (in Crores) Years Sale Advt. & % (Percentage) Promotional Expenses 2002-03 397.08 8.28 2.09 2003-04 382.13 11.1 2.91 2004-05 401.24 5.92 1.48 2005-06 402.85 7.76 1.93 2006-07 596.91 9.59 1.61 2007-08 815.39 18.85 2.31 2008-09 858.69 13.7 1.6 2009-10 690.51 21.1 3.06 2010-11 1007.45 25.86 2.57 2011-12 1401.02 23.24 1.66 2012-13 1934.29 23.61 1.22 2013-14 2375.55 36.86 1.55 2014-15 2345.85 64.57 2.75 2015-16 2223.46 63.96 2.88 2016-17 2230.00 70.24 3.15 Total 18062.42 404.64 2.24 https://www.mhc.tn.gov.in/judis 6/17 C.S. (COMM. DIV.) No.681 of 2019
4. According to the plaintiff, they came to know that the defendant has adopted the same name, layout and colour scheme for its offending pouch and has projected its brand “GOLD KING” in a similar orange background and pale yellow shades at the side of the label containing the image of “Sunflower” which is deceptively similar to that of the plaintiff's trademark, logo and the package. The plaintiff has sent a Cease and Desist Notice on 01.10.2019 to the defendant and the defendant has also replied to the same by its reply dated 10.10.2019 stating that they have changed their brand name and also the trade dress.
According to the plaintiff the defendant continues to infringe its registered trademark and copyright. As seen from the plaint in respect of other offenders of the plaintiff's Trade Mark, the plaintiff had filed suits against the said offenders and in some cases, the suit has been decreed and in some cases interim injunctions were granted and in some cases, the suits were settled out of court. The details of the suits filed by the plaintiff against similar offenders is disclosed in paragraph No.26 of the plaint and the same is extracted hereunder :-
Sl. No Product Name C.S. No. Status https://www.mhc.tn.gov.in/judis 7/17 C.S. (COMM. DIV.) No.681 of 2019 1 Good Winner 327/2013 Suit decreed as prayed. 2 Gold Star 679/2013 Pending for compromise. 3 Winner Gold 680/2013 Memo of Compromise filed case settled.
4 Gold minister 683/2013 Pending for compromise 5 Sunrich 381/2014 Reserved for order in interim injunction application.
Judge who reserved the order was retired. May be taken up for fresh hearing in injunction petition.
6 Jeyam Gold 628/2014 No one filed vakalat. Case pending for recording exparte evidence.
7 Jothi Brand 630/2014 Memo of compromise filed case settled.
8 SKS Gold 647/2014 Memo of compromise filed case settled.
9 Gold-o-Gold 816/2015 Offending pouch changed. Case decreed based on their adoption to new pouch.
10 Aarun Gold 839/2015 Took time to file counter in our interim injunction application.
Interim order extended until further order. Willful disobedience application is filed against them for adopting another similar pouch to that of Gold Winner, they have to file their counter.
11 Kasturi Gold 390/2014 Interim order extended until further order during the hearing on 06/07/2016.
12 Sunpure 858/2015 Written statement filed. Our interim injunction application was dismissed. We moved appeal before division bench against the said dismissal order. The appeal was admitted. During pendency compromise was arrived. We are in discussion on the draft Memo of Compromise with opposite counsel. It will be settled by this month.
13 Gold Roja 859/2015 Case settled based on their undertaking no to use the https://www.mhc.tn.gov.in/judis 8/17 C.S. (COMM. DIV.) No.681 of 2019 offending pouch.
14 Win Gold 898/2015 Case settled based on their undertaking not to use the offending pouch.
15 Sunland 740/2016 Interim order granted against the
offending comparative
advertisement. This advertisement claims that freebies are inclusive of price.
16 Sunland 745/2016 Interim order granted against the offending advertisement until further order. This advertisement claims that other oils are contain wax.
17 Son Gold 100/2017 Heard both sides and interim injunction granted against the Defendant as prayed. Written statement filed.
18 Gold King 977/2017 Memo of Compromise filed case settled.
19 Maha Dheepam 407&414/ Case settled compromise recorded.
201520 Apasara Plastics 693/2015 Case settled compromise recorded. 21 Dheepa Olee 852/2015 Case settled compromise recorded. 22 Nava Jyoti 30/2018 Memo of Compromise filed case settled.
Deepam Oil 23 Gold Fresh 202/2019 Suit decreed as prayed.
24 Ilavarasi Gold 253/2019 Suit decreed as prayed.
25 R.G. Winner 254/2019 Suit decreed as prayed.
26 Gold Wonder 278/2019 Suit decreed as prayed.
27 Dhivya Dheepam 187/2019 Exparte evidence marked. Case pending to report settlement.
28 Gold Wins 258/2019 Case Pending to report settlement.
29 Wings Gold 286/2019 Case Pending to report settlement.
30 Maha Deepam 308/2019 Exparte evidence marked. Case pending for Final disposal.
31 Olee Olee Deepam 309/2019 Memo of Compromise filed case settled.
https://www.mhc.tn.gov.in/judis 9/17 C.S. (COMM. DIV.) No.681 of 2019 32 Gold Power 287/2019 Case pending to mark Exparte evidence.
33 Sree Gold 285/2019 Counsel entered appearance for the Defendant. Case pending to file counter.
34 Golden Sun 215/2019 Private notice has been sent to the Defendant. Case pending.
35 The Gold Drops 425/2019 Private notice has been sent to the Defendant. Case pending.
36 Sakthy Gold 426/2019 Private notice has been sent to the Defendant. Case pending.
37 Gold Drops 432/2019 Counsel entered appearance for the Defendant. Case pending to file Counter.
38 Shree Gold 435/2019 Counsel entered appearance for the Defendant. Case pending to file Counter.
39 SPS Gold 436/2019 Counsel entered appearance for the Defendant. Case pending to file Counter.
5. In the aforementioned circumstances, the plaintiff has filed this suit seeking for the reliefs prayed for in the plaint and the relief sought for in the plaint is for infringement of Trade Mark and passing off and for infringement of copyright. The defendant has already been set exparte by this Court on 25.02.2020. Till date the defendant has not filed any application to set aside the exparte order. The plaintiff has let in oral and documentary evidence before the learned Additional Master IV. Before the learned Additional Master – IV, the following documents were marked as Exhibits on the side of the plaintiff :-
https://www.mhc.tn.gov.in/judis 10/17 C.S. (COMM. DIV.) No.681 of 2019 Ex.P1 Ex.P1 is the Printout of the Trademark Registration Certificate for Plaintiff's "Gold Winner" having Trade Mark No.605323 dated 27.08.1993.
Ex.P2 Ex.P2 is the Printout of the Trade mark Registration Certificate for Plaintiff's "Gold Winner" having Trade Mark No.2320409 dated 11.02.2017.
Ex.P3 Ex.P3 is the Printout of the Renewal registration certificate of trade mark registration certificate of Plaintiff's "Gold Winner" Sunflower Oil having trade mark No.605323 dated 08.09.2017. Ex.P4 Ex.P4 is the Printout of the Trade Mark Registration Certificate for Plaintiffs "Gold Winner" having Trade Mark No.2934031 dated 27.10.2017.
Ex.P1 to Ex.P1 to Ex.P4 are the Printouts taken from the computer for which Ex.P4 Certificate Under Section 65B of Indian Evidence Act is filed. Ex.P5 Ex.P5 is the Original Legal Notice issued by Plaintiff to Defendant dated 01.10.2019.
Ex.P6 Ex.P6 is the Photocopy of the Reply notice issued by the Defendant to Plaintiff dated 10.10.2019. Ex.P6 is marked subject to Proof and Relevancy.
Ex.P7 Ex.P7 is the Photocopy of the Legal Usage Certificate for trade mark No.605323 dated 18.10.2019.
Ex.P8 Ex.P8 is the Photocopy of the Legal Usage Certificate for trade mark No.2320409 dated 18.10.2019.
Ex.P9 Ex.P9 is the Photocopy of the Legal Usage Certificate for trade mark No.2934031 dated 18.10.2019.
Ex.P10 Ex.P10 is the Photocopy of the Comparison Table Showing "Gold Kind" Pouch and "Gold Winner" Pouch. Ex.P.10 is marked subject to Proof and Relevancy.
Ex.P11 Ex.P11 is the Original Board Resolution passed by the Plaintiff dated 06.07.2018.
6. Mr.A.Saravanan, the Manager-Legal of the plaintiff Company was examined as a witness on the side of the plaintiff (PW1). As seen from the documents marked as Exhibits, which has been extracted supra, https://www.mhc.tn.gov.in/judis 11/17 C.S. (COMM. DIV.) No.681 of 2019 it is clear that the plaintiff's trademark “Gold Winner” has been registered under the Trade Marks Act, 1999 on 27.08.1993 and has been renewed periodically. Ex.P1, Ex.P2, Ex.P3 and Ex.P4 confirms the same. The logo and the package of the plaintiff has also been registered along with the wordmark “Gold Winner”. A Cease and Desist notice, dated 01.10.2019 has also been issued by the plaintiff to the defendant, which has been marked as Ex.P5. A reply has also been sent by the defendant, dated 10.10.2019 to the plaintiff which has been marked as Ex.P6. As seen from the said reply, the defendant has agreed to change the wordmark of the plaintiff. But according to the plaintiff as seen from the averments contained in the plaint, the defendant is continuing to use the brand name “Gold King” with the same colour combination. Ex.P7 is the Legal Usage Certificate for the trademark registration obtained by the plaintiff in respect of the brand name “Gold Winner”. Ex.P8 is the Legal Usage Certificate for the logo / device mark of the plaintiff. Ex.P9 is the Legal Usage Certificate for the package of the plaintiff. A comparison table has also been filed which has been marked as Ex.P10 to confirm that the defendant's package is deceptively similar to that of the plaintiff's package. As seen from the aforementioned documents, the https://www.mhc.tn.gov.in/judis 12/17 C.S. (COMM. DIV.) No.681 of 2019 plaintiff has proved that they are the registered owner of the Trademark, “Gold Winner” and the defendant has copied the plaintiff's trademark by using the brand name “Gold King” and also by using a similar logo and colour scheme of the plaintiff. The colour scheme of the plaintiff as well as the defendant is scanned & reproduced hereunder :-
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7. As seen from the Exhibits, the plaintiff has established that they are the registered owner of the Trade Mark “Gold Winner” and they are also the registered Copyright owner and the defendant has infringed the plaintiff's Trade Mark/Copyright by using the name “Gold King” which is deceptively similar to the plaintiff's Trade Mark. It is also seen from their Exhibits as well as from the averments contained in the plaint as well as from the Comparison Table (Ex.P10) that the package and the logo of the defendant is deceptively similar to that of the plaintiff's Trade Mark. The general public will certainly get confused, if the defendant is allowed to use their name “Gold King” along with the logo and package which is disclosed in the Comparison Table (Ex.P10). The plaintiff has established by oral and documentary evidence as well as from the pleadings that the defendant has copied their Trade Mark and Trade Dress.
8. For the foregoing reasons, the suit claim has been proved and the suit is decreed as prayed for with costs.
12.10.2023 Index: Yes/ No Speaking order / Non speaking order Neutral citation : Yes / No vsi2 https://www.mhc.tn.gov.in/judis 14/17 C.S. (COMM. DIV.) No.681 of 2019 APPENDIX List of Witness Examined on the side of the Plaintiff:
1. P.W.1 – Mr.A. Saravanan S. No. Exhibits Description of documents
1. P1 Ex.P1 is the Printout of the Trademark Registration Certificate for Plaintiff's "Gold Winner" having Trade Mark No.605323 dated 27.08.1993.
2. P2 Ex.P2 is the Printout of the Trade mark Registration Certificate for Plaintiff's "Gold Winner" having Trade Mark No.2320409 dated 11.02.2017.
3. P3 Ex.P3 is the Printout of the Renewal registration certificate of trade mark registration certificate of Plaintiff's "Gold Winner" Sunflower Oil having trade mark No.605323 dated 08.09.2017.
4. P4 Ex.P4 is the Printout of the Trade Mark Registration Certificate for Plaintiffs "Gold Winner" having Trade Mark No.2934031 dated 27.10.2017.
Ex.P1 to Ex.P4 are the Printouts taken from the computer for which Certificate Under Section 65B of Indian Evidence Act is filed.
5. P5 Ex.P5 is the Original Legal Notice issued by Plaintiff to Defendant dated 01.10.2019.
6. P6 Ex.P6 is the Photocopy of the Reply notice issued by the Defendant to Plaintiff dated 10.10.2019. Ex.P6 is marked subject to Proof and Relevancy.
7. P7 Ex.P7 is the Photocopy of the Legal Usage Certificate for trade mark No.605323 dated 18.10.2019.
8. P8 Ex.P8 is the Photocopy of the Legal Usage Certificate for trade mark No.2320409 dated 18.10.2019.
9. P9 Ex.P9 is the Photocopy of the Legal Usage Certificate for trade mark No.2934031 dated 18.10.2019.
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10. P10 Ex.P10 is the Photocopy of the Comparison Table Showing "Gold Kind" Pouch and "Gold Winner"
Pouch. Ex.P.10 is marked subject to Proof and Relevancy.
11. P11 Ex.P11 is the Original Board Resolution passed by the Plaintiff dated 06.07.2018.
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