Madras High Court
N.Sathish vs Mr.C.Murali Kannan on 18 November, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.73 of 2017
Reserved on : 07.11.2019
Pronounced on :18.11.2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
CORAM
THE HONOURABLE MR.JUSTICE N.SATHISH KUMAR
Civil Suit No.73 of 2017
N.Sathish
Proprietor
Om Tech Plastics,
No.16, 1st Main Road,
Ram Nagar, Peravallur,
Chennai – 600 082. ... Plaintiff
Vs
1. Mr.C.Murali Kannan,
2. Mr.M.Srinivasan
3. B.Ramachandran ... Defendants
Prayer :- Suit filed under Order VII Rule 1 CPC read with Sections 55 & 62 of
the Copyright Act, 1957 for the following reliefs :
a. Granting permanent injunction restraining the defendants, by
themselves, their servants, licences, agents and distributors or any one claiming
through them in any manner from committing 'passing off' their goods 'plastic
water taps and shower taps' and other bathroom fittings as and for or being
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C.S.No.73 of 2017
connected with the business of the plaintiff's mark 'SIVA' by using the deceptively
similar mark either 'MSR SIVA'.
b. Directing the defendants to surrender to the plaintiff all the unsold
goods of plastic water taps and shower taps under the deceptively similar mark
'SIVA' or 'MSR SIVA' containing or consisting of the offending packages together
with the blocks or dyes used for the purpose of printing the same for destruction;
c. Directing the defendants to pay the plaintiff the cost of the suit.
For Plaintiff : Mr.R.Sathish Kumar
For Defendants : Mr.A.Thiyagarajan (SC)
for Mr.D.Senthil Kumar
JUDGMENT
This suit has been filed for permanent injunction restraining the defendants and their men from committing 'passing off' their goods 'plastic water taps and shower taps' and other bathroom fittings as and for or being connected with the business of the plaintiff's mark 'SIVA' by using the deceptively similar mark 'MSR SIVA' and to direct the defendants to surrender to the plaintiff all the unsold goods of plastic water taps and shower taps under the deceptively similar mark 'SIVA' or 'MSR SIVA' containing or consisting of the offending packages 2/28 http://www.judis.nic.in C.S.No.73 of 2017 together with the blocks or dyes used for the purpose of printing the same for destruction and for cost.
2. The brief facts of the plaintiffs case is as follows :
2.1. It is the case of the plaintiff that the he is a manufacturer of 'Plastics Taps and Bathroom Fittings' including water taps under the Trade Mark 'SIVA' which is being continuously from 01.01.1994, viz., from the days of predecessors-in-title and gained reputation and goodwill attached to the said trade mark and his products mainly plastic water taps. The plaintiff has acquired a right of property in the said trade mark 'SIVA' by such continuous user from the days of predecessors-in-title. Originally the trade mark 'SIVA' in respect of goods water taps was adopted by the plaintiff's father S.Narendran from 11.04.1994 carrying on business under the name and style of Sri Murugan Plastics The plaintiff's father had obtained trade mark registration in wrong class under the Trade Mark No.757539 dated 16.06.1997. Since the trade mark 'SIVA' was registered wrongly in class II, the plaintiff's father has not renewed the said trademark. The plaintiff has assigned the mark in favour of the plaintiff. The plaintiff started to carry on the business under the name and style 'Om Tech Plastics' from the year 2013.
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http://www.judis.nic.in C.S.No.73 of 2017 2.2. The defendants are known to the plaintiff's family and to some extent, they participated in the business of plaintiff's father in one way or other by procuring raw materials for plaintiff's father business 'Sri Murugan Plastics' or rendering assistance in the administration of the said business in all these years or doing the job work by manufacturing water taps both for the plaintiff and his father. Since their relationship were strained during the last month of 2015, the defendants have started to market the plastic water taps under the deceptive mark 'MSR SIVA'. The defendants have jointly filed one trade mark registration application No.3092920 dated 03.11.2015 in relation to goods taps, bath taps, water taps, shower taps ect., by claiming user from the 05.09.1995. The plaintiff is having 22 years long user of the mark 'SIVA' in respect of the above said goods till this date. The plaintiff gained popularity during the last 22 years. The conduct of the defendants amount to 'passing off' their goods like that of goods of the plaintiff. Hence, the suit.
3. Brief contentions of the defendants are as follows :
3.1 It is the contention of the defendants that the plaintiff has not established the alleged right and interest over the trademark. Neither the plaintiff nor his predecessor is the prior exclusive user of the said Mark 'SIVA' and the Trade Mark Application No.22877584 is invalid and abandoned one. The said 4/28 http://www.judis.nic.in C.S.No.73 of 2017 Narendran, father of the plaintiff was a part of the defendants business during the year 1994 and he never involved in manufacturing activities of taps and the said Narendran was only utilized by the defendants to market 'SIVA Taps' which are manufactured by them. The defendants were engaged in manufacturing of the taps with the defendants moulds and dyes in the name and style of 'SIVA'.
Since, the defendants found the said Narendran was playing some fraud, avoided him in their business. Thereafter, the said Narendran fraudulently took away the dyes which were utilized by the defendants for manufacturing of taps in the name of 'SIVA'. Thereby, the defendants have lodged a police complaint, wherein the plaintiff has admitted the theft of dyes. It is further stated that only the defendants were manufacturing plastic taps in the name and style of 'SIVA' and father of the plaintiff had earned his entire livelihood through the defendants business and in order to reciprocate his well being the said Narendran had mentioned the defendants name in the invitation card. The plaintiff's father indirectly admitted that the defendants are having right over the trade mark of 'SIVA' and hence, they are protected under Section 54 of the Trademark Act.
3.2 The plaintiff and his father colluded together and filed the present suit. The alleged assignment deed dated 06.01.2015 is created for the purpose of the suit. The application filed for registration of the trademark is also pending 5/28 http://www.judis.nic.in C.S.No.73 of 2017 before the Trade Mark Registrar. The plaintiff has not come to the Court with clean hands. It is their further contention that the trade mark 'SIVA' is not absolutely belonging to the plaintiff's father and the defendants were using the mark concurrent from 1994. The trade mark 'MSR SIVA' absolutely belongs to the defendants and the said mark is not a deceptive mark. The defendants have not committed any act of 'passing off'. The application filed by both sides for registration of their trade mark is pending before the Trademark Registrar. It is his further contention that the trademark 'SIVA' is the absolute mark of the plaintiff and the defendants are using the mark concurrently 'MSR SIVA' and the said mark is not a deceptive mark. They have not committed an act of passing off. Hence, prayed for dismissal of the suit.
4. Based on the above pleading, the following issues have been framed :
1. Whether the plaintiff is the proprietor of trademark “SIVA” since 1994 for water taps?
2. Whether there is cause of action for the present suit?
3. Whether the plaintiff has come to this Hon'ble Court with unclean hands and has suppressed material facts?
4. Whether the suit is bad for non-joinder of necessary party?
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5. Whether the defendants have been manufacturing taps under the trademark “SIVA” since 1994 and whether the defendants can claim prior user of the trademark “SIVA” with respect to taps as against the plaintiff?
6. Whether the plaintiff's father S.Narendran and the defendants were jointly carrying on manufacturing plastic taps business in the name and style of SIVA?
7. Whether the mark of “SIVA” and “MSR SIVA” is deceptively similar in ocular vision that they creating an impression “SIVA” and “MSR SIVA' are one and the same in the public mind?
8. What other reliefs, are the parties are entitled to?
5. On the side of the plaintiff, P.W.1 and P.W.2 were examined and Ex.P.1 to Ex.P.30 were marked. On side of the defendants, D.W.1 to D.W.4 have been examined and Ex.D.1 to Ex.D.16 were marked.
Witnesses examined on the side of the plaintiffs :
P.W.1. - Mr.N.Sathish P.W.2 - Mr.S.Narendran 7/28 http://www.judis.nic.in C.S.No.73 of 2017 Witnesses examined on the side of the defendants:
D.W.1 – Mr.Murali Kanna D.W.2 – Mr.M.Srinivasan D.W.3 – Mr.M.Sakthivel D.W.4 – Mr.B.Ramachandran Exhibits produced on the side of the plaintiffs:
S.No. Date Description of documents Exhibit
1. 06.01.2015 Copy of Trademark Assignment Agreement P-1 between the plaintiff and his father
2. 08.01.2015 Copy of Trademark application No.2877584 by P-2 the plaintiff
3. 10.11.2008 Copy of Trademark Registration Certificate of P-3 mark SIVA obtained in the name of SRI MURUGAN PLASTICS in Class 02
4. 25.04.1994 Copy of Registration Certificate issued in favour P-4 of Sri Murugan Plastics
5. 09.06.2014 Copy of Marriage Invitation of the plaintiff's sister P-5
6. 23.02.2015 Copy of marriage invitation of the plaintiff P-6
7. 03.11.2015 Copy of Trademark application No.3092920 for P-7 MSR SIVA filed by the defendants
8. 08.08.2016 Copy of objection filed by the plaintiff for the P-8 defendants trademark application No.3092920
9. 25.11.2016 Copy of counter statement filed by the P-9 defendants against the plaintiff's objection for Trademark No.3092920
10. 04.08.2016 Copy of Trademark application No.3328285 P-10 dated 04.08.2016 filed by the third defendant
11. 12.01.2007 Copy of VAT Registration by Sri Murugan Plastics P-11 8/28 http://www.judis.nic.in C.S.No.73 of 2017 S.No. Date Description of documents Exhibit
12. 09.07.2013 Copy of VAT Registration by the plaintiff P-12
13. 11.10.2016 Copy of Certificate of Registration obtained under P-13 MSME by the plaintiff
14. -- Online copies of the acknowledgments issued by P-14 the Commercial Tax Department for receipt of monthly returns of the plaintiff
15. 12.04.2005 Copy of Invoice for purchase of machineries by P-15 Sri Murugan Plastics
16. 16.04.2005 Copy of the Invoice for purchase of machineries P-16 by Sri Murugan Plastics
17. 12.04.2007 Copy of Invoice dated 12.04.2007 for purchase of P-17 machineries by Sri Murugan Plastics
18. 08.08.2014 Copy of ISO Certificate issued by the plaintiff P-18
19. 17.05.2014 Copy of Invoice for purchase of machineries by P-19 OM TECH PLASTICS
20. 26.05.2015 Copy of purchase invoice for holographic labels P-20 for the plaintiff's trademark SIVA
21. 13.01.2016 Copy of purchase invoice for holographic labels P-21 for the plaintiff's trademark SIVA
22. -- Copy of Form-A1 submitted by SRI MURUGAN P-22 PLASTICS
23. -- Original Invoices for sale of products containing P-23 SIVA
24. 29.08.2016 Copy of legal notice by the plaintiff to the third P-24 defendant
25. 17.09.2016 Copy of reply notice issued by the third defendant P-25 to the plaintiff 26, -- Copy of plaintiff's label containing trademark P-26 SIVA
27. -- Copy of plaintiff's water taps containing the P-27 trademark SIVA
28. -- Copy of the plaintiff's business leaf let P-28 9/28 http://www.judis.nic.in C.S.No.73 of 2017 S.No. Date Description of documents Exhibit
29. -- Copy of the defendants label under the P-29 Trademark MSR SIVA
30. -- Copy of the defendants water taps containing the P-30 trademark MSR SIVA Exhibits produced on the side of the defendants:
S.No. Date Description of documents Exhibit
1. -- Photograph in which plaintiff, his mother and D-1
sister were seen
2. -- Document posted in face book D-2
3. -- Photograph in which plaintiff and the defendants D-3
are there
4. 18.07.2016 Undertaking letter given by the plaintiff before the D-4 police
5. -- Copy of permanent registration certificate D-5
6. -- Photos of dye/mould for SIVA taps D-6
7. -- Copy of Invoices for purchasing machineries D-7
8. 17.09.1998 Copy of letter issued by Vysya Bank to the first D-8 defendant
9. 09.10.1997 Copy of Invoice for purchasing machineries from D-9 VR Autoplast
10. 03.05.1998 Copies of receipts from Vignesh Plastics for D-10 manufacturing taps
11. -- Copies of Electricity payment Card D-11
12. -- Copy of Income Tax Returns with Balance sheet D-12 from the year 2000-2001
13. -- Copy of Income Tax Returns with Balance sheet D-13 from the year 2001-2002 10/28 http://www.judis.nic.in C.S.No.73 of 2017 S.No. Date Description of documents Exhibit
14. 21.02.2016 Online copy of letter refusing to register the mark D-14 Siva Taps
15. 22.06.2018 Legal proceedings certificate issued by D-15 Trademark registry for MSR SIVA pending before Trademark registry
16. 05.04.2017 Copy of CSR No.95 of 2017 issued by D-16 Choolaimedu Police Station
6. It is the contention of the learned counsel for the plaintiff that the suit itself is for 'passing off' . The trademark 'SIVA' was originally registered in the name of the father of plaintiff on 16.06.1997. He was dealing with plastic taps from the year 1994. Whereas, the defendant has adopted the similar mark for selling their products, the plastic taps and filed an application for registration of the trademark claimed to be user from 10.05.2013. It is his contention that though the father of the plaintiff has registered the trade mark in a different clause, however, the goods dealt by him is only with regard to the plastic taps. Merely because the registration is not renewed subsequently, it cannot be said that he has abandoned. In fact, he is continuously using the trademark 'SIVA' in his business from the year 1994. Whereas, the defendants are adopting the similar mark and also filed an application, which is also opposed by the plaintiff. The documents filed by the plaintiff clearly indicate that the plaintiff's father was prior user of the trade mark 'SIVA'. The defence of the defendants is on three 11/28 http://www.judis.nic.in C.S.No.73 of 2017 folds viz., (i) The defendants are also joint owner of the trade mark, (ii) the suit is not maintainable and (iii) exclusive right cannot be claimed and the defendants are protected under section 54 of Trademarks Act.
7. Further contention of the counsel for the plaintiff is that the registered prior user is different from registered proprietor as per the definition of the registered user and registered proprietor. Ex.P.1 Assignment Deed executed by the father of the plaintiff clearly indicate that on 06.01.2015, the father of the plaintiff has assigned the rights in favour of the plaintiff. The father of the plaintiff also deposed as P.W.2. Therefore, the contention that the suit is bad for non joinder of necessary party has to fail. Ex.P.4, the Trademark Registration Certificate clearly indicate that the name 'SIVA' was registered in the name of the plaintiff's father for trading as ' Sri Murugan Plastics'. Further the above registration was wrongly done in class 2. However, the fact remains that by application dated 16.06.1997, the trademark has been registered in favour of the plaintiff's father. The above document is not disputed. The defence of joint ownership was set up only in the Court and not in the prior proceedings. It is his contention that to be a prior user of the trademark one need not be a manufacturer. Ex.P.5, 6 invitation cards clearly indicate that the defendants were no way connected with the plaintiff's father's business or trademark. There 12/28 http://www.judis.nic.in C.S.No.73 of 2017 is no existence of partnership deed to claim a joint ownership and that the partnership firm has been established by the defendants. All the defendants have filed Income Tax returns and Sales Tax returns individually. Therefore, once joint ownership was pleaded, the onus lies on them to prove the partnership business or joint ownership business. Except D.W.1, others have not filed any document. In Ex.D.15 filed by the third defendant before the Trademark Registry, the user date is shown as 10.05.2013. Hence, it is his contention that when the plaintiff has established prior user of the mark, merely because, the defendants have some acquaintance with the plaintiff's father, they cannot claim joint ownership or partnership. Hence, it is his contention that the suit has to be decreed.
8. The learned counsel appearing for the defendants submitted that the plaintiff himself admitted that the plaintiff's father continues the business. Whereas the suit is not filed by him nor filed by Sri Murugan Plastics. The conduct of the parties will clearly prove that the business was jointly done by the father of the plaintiff and the defendants and that only the defendants are manufacturers of plastics taps from the year 1994. Hence, it is his contention that only self serving documents were filed by the plaintiff. The plaintiff has admitted that till 2015, there is no dispute between the plaintiff and the 13/28 http://www.judis.nic.in C.S.No.73 of 2017 defendants. The evidence of D.W.3 clearly prove that the plaintiff and the defendants were jointly doing the business and he has share in the income. Ex.D.5 Registration Certificate issued by the Regional Joint Director of Industries and Commerce, Chennai in favour of the defendants clearly indicate that they are doing the business in moulded plastic components. Ex.D.7, Ex.D.8, Ex.D.9 and Ex.D.10 clearly proves that the defendants are manufacturers of plastics and only the plaintiff's father was marketing the same. All these facts clearly prove that only defendants are using the mark 'SIVA' from the year 1994 and the plaintiff cannot claim exclusive right over the trademark 'SIVA'. Ex.B.12 Income Tax returns also clearly indicate that the defendants are trading in plastic taps. It is their further submission that the plaintiff and the defendants have both filed application before the Trademark Registrar and those applications are pending. Hence, the plaintiff cannot seek for injunction for 'passing off'.
9. Issue Nos.1, 5 and 6 :
It is the specific case of the plaintiff that his father Narendran has adopted the trademark 'SIVA' in relation to bathroom taps and bath fittings and he has also obtained Trademark Certificate bearing No.757539 dated 16.06.1997. However, the trademark was registered in class 2. Since, it was wrongly registered in wrong class 2, the plaintiff's father has not renewed the said 14/28 http://www.judis.nic.in C.S.No.73 of 2017 trademark. However, the plaintiff's father was continuously using the same trademark and he has also assigned the trademark right in favour of the plaintiff in the year 2015. The plaintiff's father is continuously using the trademark in respect of plastic water taps and bath fittings. It is the contention of the plaintiff that they were acquainted with the defendants family and to some extent they also participated in the business in one way of other either by procuring raw material for the business of the plaintiff's father or rendering assistance in the administration of the said business till the last quarter of 2015. When the matter stood thus, the defendants applied for registration of trademark in application No.3092920 dated 03.11.2015 claiming user 10.05.2013. Similarly, the third defendant has also filed an application on 04.08.2016 claiming user from 05.01.1995. It is also opposed by the plaintiff. Hence, the suit has been filed on the ground of prior user of the trademark from the year 1994.
10. Whereas, it is the main contention of the defendants that the suit is not maintainable as the father of the plaintiff has not filed the suit. The defendants are joint owners of the business and they are manufacturers of the plastics and the plaintiff's father only marketed the products. Only because of such relationship, even in the invitation card, the name of the defendants were printed. Hence, it is their contention that they are also doing the same business 15/28 http://www.judis.nic.in C.S.No.73 of 2017 with the plaintiff's father. Therefore, they are also entitled to use the trademark 'SIVA' and they have also been protected under section 54 of the Trademark Act. Ex.P.1 is the Assignment Deed executed between the plaintiff and his father on 06.01.2015. A careful perusal of the same indicate that the father of the plaintiff has assigned the mark 'SIVA' in favaour of the plaintiff. Ex.P.2 is the trademark application No.2877584 filed by the plaintiff on 08.01.2015. It was opposed by the defendants and it is pending. Ex.P.3 is the Trademark registration Certificate. The said trademark certificate has been obtained for marketing plastics. Ex.P.3 clearly indicate that the trademark 'SIVA' has been registered in the name of the plaintiff's father Narendran as trademark to market plastics taps. It is the contention of the plaintiff that the trademark 'SIVA' has been registered for dealing with plastic taps in the name of the father of the plaintiff as early as in November 2008 for the application dated 16.06.1997. Since, it was registered in wrong class, the said registration has not been renewed. Further, he is continuously using the trademark and gained popularity and he has assigned the same to the plaintiff.
11. The main contention of the defendants is that they are manufacturing plastics taps from the year 1994, while the plaintiff's father has been marketing the products of the defendants and the profits had been shared among them. In 16/28 http://www.judis.nic.in C.S.No.73 of 2017 the entire evidence of D.W.1 to D.W.3, in unison voice have stated that they are using the trademark in the business and therefore, they are also entitled to use the trademark 'SIVA' as joint owners. D.W.1 in his evidence has stated that they have also filed an application for registration of trademark 'MSR SIVA' claiming user from 10.05.2013. In the entire evidence, it is the case of the D.W.1 to D.W.3 that there was partnership arrangement between the parties and the plaintiff's father was also a part of their business. In Ex.D.12 and Ex.D.13 Income Tax Returns, there is no mention about the partnership. Therefore, when the defendants specifically plead that there was joint business, the burden lies on them to prove that there is a joint business and partnership relationship with the persons who had agreed to share profits in the business. In determining whether a group of persons is or is not a firm, or whether a person is or is not a partner in a firm, regard shall be had to the real relation between the parties as shown by all relevant facts taken together. In this regard, it is relevant to refer Section 6 of the Partnership Act, which reads as follows :
6. Mode of determining existence of partnership -
In determining whether a group of persons is or is not a firm, or whether a person is or is not a partner in a firm, regard shall be had to the real relation between the parties as shown by all relevant facts taken together.” 17/28 http://www.judis.nic.in C.S.No.73 of 2017 From the above, in order to constitute partnership following important elements must be there :
(i) an agreement entered into by all the parties concerned;
(ii) the agreement must be to share profits of business
(iii) the business must be carried on by all or any of the persons concerned action for all.
Therefore, entire onus lies on the defendants to prove that there was a partnership business carried by the plaintiff's father and the defendants and they are all dealing with the plastic taps under the trademark 'SIVA'. The document Ex.D.5 is a permanent registration certificate obtained in the name of Rathna and Company and the same indicate that it is obtained by the first defendant in the year 1994. There is no mention whatsoever with regard to the trademark or Sri Murugan Plastics run by the plaintiff. Ex.D.7 is a quotation. This document also does not refer any partnership business. Ex.D.8 is the letter issued by the bank to Rathna and Company run by the first defendant with regard to hypothication of machines. The electricity bills filed by the defendants also do not prove that there was a partnership business. Though the above documents filed by the defendant indicate that all the defendants were doing similar business, the same will not help the defendants to prove the alleged joint ownership or partnership. Though the above documents indicate that all the defendants are dealing with 18/28 http://www.judis.nic.in C.S.No.73 of 2017 similar business, the question as to whether they were selling the products under the trademark 'SIVA' or whether they were prior user of the trademark has not been established.
12. The application filed by the defendants for trademark registration Ex.B.14 and Ex.B.15 when carefully perused, Ex.D.14 for registration of trademark 'SIVA' was filed by the third defendant. This application was filed on 22.01.2016. In Ex.D.15, the user date has been shown as 10.05.2013. The counter filed by the plaintiff for the above application is marked as Ex.P.9 clearly indicate that the defendants took a stand that they are using the trade mark since the year 1995. In the above application, it is no where stated that they are joint owners. The third defendant has filed an individual application dated 04.08.2016 claiming user date 05.01.1995. The same is marked as Ex.P.10. There also no whisper about joint ownership. Ex.P.11 and Ex.P.12 are VAT registration Certificates in the name of 'Sri Murugan Plastics' and the same have been filed to show that the plaintiff got registered under Value Added Tax Act. Ex.P.13 is a copy of the registration certificate under MSME by the plaintiff dated 11.10.2016 Ex.P.15 and Ex.P.17 are invoices to show that the plaintiff are doing business in the name of 'Sri Murugan Plastics. Ex.P.22, a copy of Form-A1 submitted by Sri Murugan Plastics for General Sales Tax from the year 1994 to 2013 and the 19/28 http://www.judis.nic.in C.S.No.73 of 2017 same indicate that Form-1A has been submitted by 'Sri Murugan Plastics'. From Ex.P.3 it is established that the trademark registration was originally obtained in the name of 'Sri Murugan Plastics' in a wrong class 2 instead of 11. The above document show that the trademark was originally adopted by the father of the plaintiff. The father of the plaintiff has assigned the trademark under Ex.P.1 in favour of the plaintiff. The father of the plaintiff has also deposed as P.W.2.
13. The evidence of D.W.1 and documents filed by the defendants does not prove the alleged partnership business. In fact, the documents filed by the defendants clearly indicate that they are doing business individually. Much emphasis also made on Ex.P.5 and Ex.P.6 marriage invitation of plaintiff's sister to contend that the name of the defendants also printed. On a careful perusal of Ex.P.5 and Ex.P.6, the defendants name have been printed as relative and friends. The third defendant is shown as Manager of Sri Murugan Plastics. The first defendant is shown as proprietor of Rathna and Company, Chennai. The second defendant is shown as proprietor of A-1 Super Tools, Chennai. In the invitation itself the plaintiff's father company is shown as 'Sri Murugan Plastics' Proprietor Narendran and son plaintiff namely, Sathish. The printing of the name of the defendant indicate that they are acquainted with the plaintiff's family. The printing of the defendants name also indicate their distinctive business and their 20/28 http://www.judis.nic.in C.S.No.73 of 2017 individual business. The documents filed by the defendants clearly indicate that all the defendants are doing separate business. Infact, the first defendant is running a company known as Rathna and Company. The second defendant is the proprietor of the company known as 'A One Super Tools' and the third defendant was working as a Manager under Sri Murugan Plastics. D.W.1 also admitted that SSI registration certificate was obtained only in the name of Rathna and Company. It is also suggested to the defendants that defendants were manufacturing plastics and Sri Murugan Plastics was the owner of the trademark.
14. Further, the defendants had admitted that the products were marketed by the plaintiff's father. The copy of Invitations Ex.P.5 and Ex.P.6 and the nature of pleadings of the plaintiff and the defendants clearly indicate that the defendants and the plaintiff family have some acquaintance. Whether or not, the business was started and run jointly, absolutely there is no evidence. The defendants have not clinchingly established that the trademark 'SIVA' was owned by them. Whereas, the plaintiff has established that the trademark 'SIVA' was wrongly registered in class 2 and it was adopted by the plaintiff's father. Thereafter, the plaintiff's father has assigned the trademark in favour of the plaintiff. However, the trademark has not been subsequently renewed. 21/28 http://www.judis.nic.in C.S.No.73 of 2017
15. It is the contention of the defendants that only when the plaintiff entered the business, dispute arose between them. Therefore, they have filed an application for registration of the trademark separately. One of the defendant is claiming user from 2013 and the other defendant is claiming user from 1995. All these facts clearly indicate that the defendants have not established that they are the prior user of the mark. Merely because, they have some association with the plaintiff's family, unless it is established by the defendants that they are dealing with the same trade mark 'SIVA', a joint ownership cannot be claimed by the defendants. Even assuming hat the defendants are manufacturers of plastics and their products were marketed under the trade name 'SIVA', mere manufacturing the products is not sufficient to claim right over the trademark. It is well settled that the registered proprietor of the trademark need not be a manufacturer of the products. The registered owner of the trademark may sell the product of others in the same mark. Merely because the products belongs to others, the manufacturer cannot claim exclusive right over the mark which has been adopted and put in use by the proprietor of the mark.
16. The evidence adduced by the plaintiff clearly prove the fact that the application for registration of the trademark has been given in the year 1997 itself 22/28 http://www.judis.nic.in C.S.No.73 of 2017 and in the year 2008, the trademark has been registered. Section 54 of the Trademark Act deals with right of assignment by registered user. The registered user of the trademark has no right to assign or transfer the trademark in favour of others. It is to be noted that a registered user is different from registered proprietor. The registered proprietor means a person for time being entered in the register as proprietor of the trademark. Whereas, the registered user is a person who is for the time being registered as user under section 49 of the Act. Section 49 deals with registered user of the trademark. Registered user can be registered only by agreement in writing or a duly authenticated copy thereof, entered into between the registered proprietor and the proposed registered user with respect to the permitted use of the trademark. Section 49 deals with the registered user and the registration can be done only on the agreement with the registered proprietor. Therefore, the contention that Section 54 will come into aid of the defendants cannot be countenanced. Though Ex.P.3 is not renewed, the fact remains that the word 'SIVA' was adopted by the plaintiff's father. The application was registered in the year 2008 though the application was given in the year 1997 itself. The Commercial Tax Department Certificate was also issued in the name of Sri Murugan Plastics as early as in the year 1995 as could be seen under Ex.P.3. The Certificate of Registration is also in the name of Sri Murugan Plastics. Invitations Ex.P.5 and Ex.P.6 in the 2014 indicate that only 23/28 http://www.judis.nic.in C.S.No.73 of 2017 the plaintiff and his father has been shown as proprietor of Sri Murugan Plastics. Their trademark is also printed in the invitation shown as 'SIVA'. It is not the case of the defendants that the trademark has been abandoned and not in use by the plaintiff for more than five years. Their main contention is that they are joint proprietor of the trademark which has not been established and the onus has not been discharged by them. Accordingly, the issues are against the defendants and favour of the plaintiffs.
17. Issue Nos.2 to 4 and 7 and 8 :
On a perusal of the entire materials and evidence, the plaintiff has filed the suit claiming prior adoption of the trademark 'SIVA' which has been clearly established as discussed in the earlier issues. Therefore, it cannot be said that there is no cause of action for the present suit. The suit is filed for 'passing off' goods in their mark 'SIVA' on the ground that they are prior user of the trademark from the year 1994. Therefore, it cannot be said that the plaintiff has come to the Court with unclean hands. On a perusal of the entire documents, it cannot be said that the plaintiff has come with unclean hands. With respect of the issue of nonjoinder, it is to be noted that the trademark was originally adopted by the father of the plaintiff and carrying on business in the name and style Sri Murugan Plastics. The mark has been assigned in favour of the plaintiff. The father of the 24/28 http://www.judis.nic.in C.S.No.73 of 2017 plaintiff has also been examined as P.W.2 and supported the version of the plaintiff. The plaintiff has come to the Court on the basis of the assignment in his favour. Section 39 of the Trademarks Act deals with the assignment of unregistered trademark. There is no bar under law to assign unregistered trademark with or without the goodwill of the business concerned. The entire suit proceeded on the basis of the trademark adopted by the plaintiff's father and he was prior user. The said trademark is in fact got registered under wrong class. The fact remains that the trademark 'SIVA' was originally adopted and registered in the name of the plaintiff's father. On a perusal of the entire evidence of the defendants, both oral and and documentary, this Court is unable to accept their contention that they are joint owners. Further, when the plaint is filed on the basis of the right acquired under the assignment of the trademark, merely because, the suit is not filed in the name of 'Sri Murugan Plastics' or his father is not a party to the suit, it cannot be said that the suit is bad for non joinder of party.
18. Further, since the plaintiff has established prior user of the trademark 'SIVA' in respect of plastic goods and priority in adoption and use will certainly prevail over priority in registration. Mere filing of an application for registration of the trademark which is pending and opposed by the plaintiff, will not confer any 25/28 http://www.judis.nic.in C.S.No.73 of 2017 rights to the defendants. Whereas, the plaintiff has proved prior adoption and continuous use of the trademark 'SIVA'. The mark 'SIVA' and 'MSR SIVA' are deceptively similar to each other and both are identically and phonetically similar. Similarly, the goods dealt by the plaintiff and the defendants are one and the same, viz., plastic water taps. On comparing both marks 'SIVA' and 'MSR SIVA', both the marks are identically similar. Merely because, 'MSR' is prefixed, it cannot said that there is no similarity in the two marks. Therefore, the adoption of the mark 'SIVA' or 'MSR SIVA' by the defendants would certainly mislead the ordinary people of average intelligence. The fundamental principle of 'passing off' action is that the person shall not sell his own goods under the pretence that they are goods of other men and it will create confusion in the minds of purchasers of similar goods. Accordingly, the issues are answered in favour of the plaintiffs and against the defendants.
19. In the result, the suit is decreed for permanent injunction with cost. Since the defendants are also doing similar business, they are directed to liquidate the goods within two months from the date of judgment.
18.11.2019 vrc 26/28 http://www.judis.nic.in C.S.No.73 of 2017 Index : Yes/ No Internet : Yes Speaking/Non-speaking Order 27/28 http://www.judis.nic.in C.S.No.73 of 2017 N.SATHISH KUMAR, J.
vrc Judgment in Civil Suit No.73 of 2017 18.11.2019 28/28 http://www.judis.nic.in