Madras High Court
Itc Limited vs Ganesh Flour Mills on 1 November, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.285 of 2013
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 01.11.2019
CORAM
THE HONOURABLE MR.JUSTICE N.SATHISH KUMAR
C.S.No.285 of 2013
ITC Limited,
ITC Centre,
4th Floor, 760, Anna Salai,
Chennai – 600 002.
Represented by its Constituted Attorney,
S.Satyanathan ... Plaintiff
Vs.
1.Ganesh Flour Mills,
88, Burtolla Street,
Kolkata – 700 007.
2.Ganesh Grains Limited,
174, Cittraranjan Avenue,
Kolkata – 700 007. ... Defendants
Plaint filed under Order VII Rule 1 C.P.C. read with Order IV
Rule 1 of the High Court Original Side Rules praying for:
(a) A decree of permanent injunction restraining
the defendants, their directors, employees, officers,
servants, agents and all others acting for and on their
behalf from making, selling, distributing, advertising,
exporting, offering for sale, and in any other manner,
directly or indirectly, dealing in any product including
Atta in the impugned labels 1 and 2 and/or packaging,
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including packets, sachets, labels and containers, as a
colourable imitation and substantial reproduction
amounting to an infringement of the plaintiff's trademark
registered under No.1106809 in Class 30;
(b) A decree of permanent injunction restraining
the defendant, its officers, employees, servants and
agents, from manufacturing, selling, offering for sale,
advertising and directly or indirectly dealing in any
product including Atta in the impugned label 1 or
impugned label 2 and/or in packaging, including packets,
sachets, labels and containers, as are a colourable
imitation and substantial reproduction of the
packaging/label of the plaintiff's AASHIRVAAD Shudh
Chakki Atta, AASHIRVAAD Superior MP Atta and
AASHIRVAAD Select Superior Sharbati Atta which
amounts to an infringement of the plaintiff's copyright
therein;
(c) A decree of permanent injunction restraining
the defendant, its officers, employees, servants and
agents, from manufacturing, selling, offering for sale,
advertising and directly or indirectly dealing in any
product including Atta in the impugned label 1 or
impugned label 2 and/or in packaging, including packets,
sachets, labels and containers, as are a colourable
imitation and substantial reproduction of the
packaging/label of the plaintiff's AASHIRVAAD Shudh
Chakki Atta, AASHIRVAAD Superior MP Atta and
AASHIRVAAD Select Superior Sharbati Atta as is likely to
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lead to passing off the product(s) of the defendant as
and for that of the plaintiff's.
(d) To direct the defendants to pay to the
plaintiff's as compensatory and punitive damages a sum
of Rs.8,05,000/- for the acts of the trademark
infringement, copyright infringement and passing off
committed by them;
(e) To grant order of delivery up of any
brochures/printed material and/or any material which
infringes plaintiff's registered trademark and the
copyright in the packaging/labels of the plaintiff's
AASHIRVAAD Shudh Chakki Atta, AASHIRVAAD Superior
MP Atta and AASHIRVAAD Select Superior Sharbati Atta;
(f) To direct the defendant for rendition of
accounts in respect of their alleged activities especially
sale and promotion of their products under impugned
label 1 and/or in impugned label 2 and/or in packaging,
including packets, sachets, labels and containers, as are
a colourable imitation and substantial reproduction of
the packaging/label of the plaintiff's AASHIRVAAD Shudh
Chakki Atta and AASHIRVAAD Superior MP Atta;
(g) Costs and such other relief as this Hon'ble
Court may deem fit, in the circumstances of the case, in
the interests of justice and equity.
For Plaintiff : Mr.P.S.Ramesh, Senior Counsel
for Mr.M.S.Bharath
For Defendant : Set ex-parte
vide order dated 07.12.2016
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C.S.No.285 of 2013
JUDGMENT
The suit has been filed for permanent injunction and such other reliefs more fully described in the prayer portion of this judgment.
2. The averments set out in the plaint, in gist and kernel are as follows:-
i) The plaintiff commenced its Foods Business in the year, 2001 with the launch of its product, called “KITCHENS OF INDIA”, ready to eat Indian gourmet dishes. In the year 2002, the plaintiff launched its confectionery products under the brand names, “Mint-
O” and “CANDYMAN” and atta product, under the brand name, “AASHIRVAAD”. In just over a decade, the Foods Business of the plaintiff has grown to significant size under many distinctive brand names like AASHIRVAAD, SUNFEAST, BINGO, KITCHENS OF INDIA, MINT-O, CANDYMAN and YIPPEE! With enviable strong distribution reach, a rapidly growing market share and a solid market standing.
ii) The plaintiff adopted the distinctive trademark, “AASHIRVAAD” in the year 2001, and as mentioned above, the plaintiff entered the branded Atta market in India with the launch of 4/14 http://www.judis.nic.in C.S.No.285 of 2013 AASHIRVAAD Atta, sometime in May, 2002, and it is available all over India, and is also exported to United States of America, Australia, Singapore and Canada. As per Nielsen, an independent and reputed market Research Agency, the plaintiff's product, AASHIRVAAD Atta is India's leading branded Atta with a market share of approximately 41% by value sales and 35.1% volume sales, as of 2012. As on date, the plaintiff sells its product, AASHIRVAAD Atta in four different variants, as given below:-
a) Aashirvaad Shudh Chakki Atta,
b) Aashirvaad Superior MP Atta,
c) Aashirvaad Select Superior Sharbati Atta, and
d) Aashirvaad Atta with multi grains.
iii) The plaintiff had launched its product, AASHIRVAAD Shudh Chakki Atta (known as AASHIRVAAD Whole Wheat Atta till 2012), AASHIRVAAD Superior MP Atta (known as AASHIRVAAD Whole Wheat Atta till 2010 and AASHIRVAAD Whole Wheat Atta Superior MP Wheat till 2012) and AASHIRVAAD Select Superior Sharbati Atta in the year 2002 and AASHIRVAAD Atta with multigrains in the year 2010, in a unique packaging/labels with distinctive trade dress. The trade dress of AASHIRVAAD Shudh 5/14 http://www.judis.nic.in C.S.No.285 of 2013 Chakki Atta, AASHIRVAAD Select Superior Sharbati Atta and AASHIRVAAD Superior MP Atta underwent minor changes in the years 2010 and 2012, during which period, the position of variant names was changed and certain additional devices were added. In spite of these changes, the leading, prominent and identifying features of the plaintiff's AASHIRVAAD Atta package remained the same.
iv) The plaintiff has launched its Atta products, under various brand names, viz., i) AASHIRVAAD Whole Wheat Atta, ii) AASHIRVAAD Whole Wheat Atta Superior MP Wheat, iii) AASHIRVAAD Shudh Chakki Atta, iv) AASHIRVAAD Superior MP Atta and v) AASHIRVAAD Select Superior Sharbati Atta, in various distinctive features and trade dresses.
v) Most of the essential features of the AASHIRVAAD Atta labels have remained unchanged since the launch of the AASHIRVAAD brand in 2002. Since the adoption of the mark AASHIRVAAD in the year 2001, the plaintiff has been continuously and consistently using the unique and distinctive trade dress with respect to its AASHIRVAAD Shudh Chakki Atta Package, 6/14 http://www.judis.nic.in C.S.No.285 of 2013 AASHIRVAAD Superior MP Atta Package and AASHIRVAAD Select Superior Sharbati Atta Pakage in India as well as in countries such as Australia, Singapore, Canada and United States of America. They gained very good reputation and goodwill, they had turnover, they also incurred expenses in advertisement and they also obtained following Registrations, which are as follows:-
Registration Mark Class Status
No.
1087266 30 Filed on
14/03/2002
Registered valid
till 14/03/2022
1092701 30 Filed on
05/04/2002
Registered Valid
till 05/04/2002
1320218 29 & 30 Filed on
11/11/2004
Registered valid
till 11/11/2014
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Registration Mark Class Status
No.
1106809 30 Filed on
24/05/2002
Registered valid
till 24/05/2022
vi) The defendant No.1 is known to be selling Atta under
the brand “GANESH” for the last several years in many labels, which are not of a concern of the plaintiff. In the year 2013, defendant No.1 appears to have commenced using a new label for their wheat flour products which is identical in all features to the plaintiff's AASHIRVAAD label. Soon after, the plaintiff gained knowledge in March 2013, that the defendants are selling, marketing and manufacturing Atta and other allied products under the name “GANESH” with trade dress identical to that of plaintiff's mark “AASHIRVAAD”, it collected product samples. The plaintiff received the information, which confirmed the involvement of the defendants in infringing.
vii) The plaintiff upon visiting the website of the defendants viz., www.ganeshfoods.com to its utter dismay and shock found that 8/14 http://www.judis.nic.in C.S.No.285 of 2013 the defendants have also copied the trade dress/packaging of the plaintiff's AASHIRVAAD Select Superior Sharbati Atta. The defendants label is shown as follows:-
It is hereinafter referred to as “the impugned label 2”. The defendants' impugned label 2 is a colourable imitation and substantial reproduction of the trade dress/packaging/label of the plaintiff's AASHIRVAAD Select Superior Sharbati Atta. Therefore, the plaintiff, having no other option, has filed the present suit, for the aforesaid relief.
3. The defendants were set ex-parte vide order dated 07.12.2016 and the suit was directed to be placed before the learned Additional Master for recording ex-parte evidence. Before the learned Additional Master, on behalf of the plaintiff one Suresh Chand, was examined as P.W.1 and Exs.P1 to P21 were marked and original material objects marked as MO1 to MO8. 9/14 http://www.judis.nic.in C.S.No.285 of 2013
4. It has already been set out supra that as many as 21 exhibits, namely Exs.P1 to P21 have been marked and the details of the 28 exhibits are as follows:
Sl. No. Exhibits Description
1 Ex.P1 The authorization letter.
2 Ex.P2 Photocopy of letter dated 07.06.2012 from
Nielsent (India) Private Limited.
3 Ex.P3 Duplicate copy of letter dated 07.06.2012 from
Nielsen (India) Private Limited.
4 Ex.P4 Original confirmatory deed of assignment dated
04.03.2013 between Mc Cann Erickson India Ltd., Anil Thomas and plaintiff.
5 Ex.P5 Photocopies of invoices evidencing sale of plaintiff's AASHIRVAAD Atta in Canada, Singapore and Australia dated 07.09.2012 to 25.01.2013. 6 Ex.P6 Photocopies of Invoices evidencing sale of plaintiff's AASHIRVAAD Atta in USA dated 15.03.2013.
7 Ex.P7 Photocopies of print advertisements of plaintiff's AASHIRVAAD Atta in English, Tamil and other languages from 2002-2013 are collectively marked.
8 Ex.P8 The original covering letters issued by The Agency Source, New Delhi in March 2017 confirming the authenticity of the copy of the print advertisements of the plaintiff's AASHIRVAAD Atta in English, Tamil and other languages along with annexures are collectively marked.
9 Ex.P9 Photocopies of Multiple Newspaper articles on the plaintiff's brand AASHIRVAAD Atta pertaining to the years 2002-2012 are collectively marked. 10 Ex.P10 The original covering letters issued by The Agency Source, New Delhi in March 2017 confirming the authenticity of the copy of the multiple newspaper articles on the plaintiff's brand AASHIRVAAD Atta along with annexures are collectively marked. 11 Ex.P11 Photographs of the hoardings containing the plaintiff's brand AASHIRVAAD Atta are collectively marked.
12 Ex.P12 The photocopies of the legal use certificates of the
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Sl. No. Exhibits Description
plaintiff's Trademark Registration Nos.1087266, 1092701, 1106809 & 1320218 are collectively marked.
13 Ex.P13 Four original trade mark legal use certificates in
respect of the suit trademarks being
Nos.1087266, 1092701, 1106809 & 1320218 dated 07.03.2017 are collectively marked. 14 Ex.P14 Photocopies of Invoices evidencing sale of plaintiff's AASHIRVAAD Atta in Chennai between 2006-2013 are collectively marked.
15 Ex.P15 The original invoice dated 15.04.2013 bearing Bill No.6272 dated 15.04.2013 proving sale of the plaintiff's AASHIRVAAD Atta in Chennai and a copy of the said bills are collectively marked. 16 Ex.P16 The copies of the old labels used by the defendants are collectively marked.
17 Ex.P17 The copy of impugned Label 1 (“Premium Chakki Atta”) as found on the defendants website and as identified in paragraph 31 of the plaint is marked. 18 Ex.P18 Impugned label 2 package of the defendant is marked.
19 Ex.P19 Advertisements of defendant's products in Times of India, Calcutta Times dated 28th July 2013, The Telegraph dated 28th July 2013, The Times of India dated 30th June 2013 and Bartman dated 29th June 2013 products sold by the defendant's in labels whose use was restrained by this Hon'ble Court vide order dated 22.04.2013 indicating the packaging date to be July 2013 with bills and copies of defendants' website www.ganeshfoods.com bearing advertisement of their products bearing the label whose use has been restrained by.
20 Ex.P20 The certified copy of the affidavit in support of application of Manish Mimani filed on behalf of the defendants dated 04.06.2013.
21 Ex.P21 The certified copy of order passed by the Hon'ble Bombay High Court in Commercial IP (L) No.1465/2013 dated 03.12.2018.
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5. Heard the learned counsel for the plaintiff and also gone through the averments in the plaint and the proof affidavit and also perused the Exs.P.1 to P.21.
6. On perusal of Ex.P1, it is evident about the nature of business run by the plaintiff in the name of “AASHIRVAAD” and despite, they also filed legal use certificate to show that the mark has been registered. Exs.P5 to P11 filed to prove that the plaintiff is making lot of investments and selling the product in the name of “AASHIRVAAD”. Ex.P12 and P13, filed to show that registrations of the plaintiff's trademark. Ex.P14 and P15, are the invoices of the plaintiff. Ex.P16, a copy of the old labels to show that at the relevant time, the defendants adopted their own label. Ex.P17 filed to show that recently defendants have adopted an identical label as that of the plaintiff to sell his goods. Ex.P18 impugned label 2 package of the defendants is filed. Ex.P19 is filed to show that defendants have also advertised for selling the goods with labels identical to the plaintiff. Ex.P20 is affidavit filed by the defendant at the interlocutory stage to show turnover by selling. Ex.P21 is the certified copy of order passed by the Hon'ble Bombay High Court. 12/14 http://www.judis.nic.in C.S.No.285 of 2013 Particularly Exs.P17 and P18, the label used by the defendants is identical and it may create a confusion in the mind of customer and the colour combination is also almost identical and background of the packing is also identical and in fact trade dress, getup, layout and colour combination are similar to that of the plaintiff. In fact it is nothing but the clear label of the plaintiff. The defendants remained ex-parte. After filing the application to vacate the ex- parte order, the injunction was made absolute, he remained ex- parte at interlocutory stage, he also filed an application to vacate the injunction and also filed an affidavit showing turnover as document Ex.P20. From the above documents, it is clear that the plaintiff has proved that the defendants are adopting the similar label and is definitely infringing the copyright of the plaintiff. Accordingly, plaintiff proved the claim and entitled to decree.
7. As far as damages is concerned, it is the case of the plaintiff that even after the interim order has been made absolute, the defendants have marked the product in the same label and violated the orders.
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8. In view of the same, this Court is of the view that the suit is decreed as prayed for, with punitive damages of Rs.5 lakhs and with costs.
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