Madras High Court
A.D.Padmasingh Isaac vs ___________ on 21 January, 2022
Author: M.N.Bhandari
Bench: Munishwar Nath Bhandari, P.D.Audikesavalu
O.S.A. (CAD) No.161 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 06.01.2022
Pronounced on : 21.01.2022
CORAM :
THE HON'BLE MR.MUNISHWAR NATH BHANDARI,
ACTING CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE P.D.AUDIKESAVALU
O.S.A. (CAD) No. 161 of 2021
and
C.M.P. Nos. 21504 and 21508 of 2021
1.A.D.Padmasingh Isaac
Trading as Aachi Spices and Foods
Old No.4, New No. 181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040.
2.M/s. Aachi Masala Foods (P) Ltd.,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040.
Represented by its Director
Mr. Ashwin Pandian .. Appellants
vs
___________
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O.S.A. (CAD) No.161 of 2021
Sudali Aachi Provisions
No.28, First Floor,
Velachery, Bazzar Road,
Balayagarden,
Chennai – 600 091.
Represented by its Partners
Mrs.Muthu Mari Ammal and Mr.G.Iyappan .. Respondents
Prayer: Original Side Appeal is filed under Order XXXVI Rule 1 of
Original Side Rules read with Section 15 of Letters Patent, 1865 and the
Provisions of 13(1) of the Commercial Courts Act, 2015, praying to set
aside the Judgment and Decree dated 03 August 2021 passed in C.S.
(Comm. Div.) No.558 of 2018, allow the suit as prayed for.
For the Appellants : Mr. P.S.Raman, Senior Counsel
for Ms. C.Gladys Daniel
JUDGMENT
(Order of the Court was made by the Hon'ble Mr.Justice P.D.Audikesavalu) (through video conference) This inter-court appeal under Clause 15 of the Letters Patent, 1865, read with Section 13 of the Commercial Courts Act, 2015, arises out of the judgment and decree dated 03.08.2021 passed in C.S. (Comm.Div.) No.558 of 2018 on the file of the Original Side of this Court. ___________ Page 2 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021
2. The trademark 'Aachi' is said to have been conceived and adopted by the First Appellant, as a proprietary concern 'Abhishek Enterprises' which commenced in the year 1995 for manufacturing and marketing a variety of spices, and the First Appellant applied and registered that trademark in the year 1999. Later, in the year 2002, the First Appellant entered into a partnership along with one Rani Pandian under the name and style of 'Naveen Products' for the same business. After incorporation of the Second Appellant viz., Aachi Masala Food Private Limited on 13.06.2006, the assets and liabilities of the said Naveen Products have been transferred to the Second Appellant with effect from 30.11.2006 and the said company has been carrying on business as manufacturers, traders, wholesalers, retailers, producers, inventors, importers, exporters, agents, distributors, consignors or otherwise dealing in masala and food products under the trademark 'Aachi'. Thereafter, on 31.03.2007, the said partnership firm Naveen Products was dissolved. The First Appellant on 01.04.2007 and 21.04.2010 executed License User Agreements in favour of the Second Appellant. Another company viz., Aachi Spices and Foods Private Limited had been ___________ Page 3 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 incorporated on 17.03.2010 and another license user agreement was entered by the First Appellant with that company on 21.04.2010. The First Appellant as the proprietor of the trademark 'Aachi' continues to use it through its licencees, viz., the Second Respondent and the said Aachi Spices and Foods Private Limited. The First Appellant has also obtained registration of the trademark 'Aachi Super Stores' in A.No.1690157 in Class 42 with respect to wholesale and retail stores for food products since 22.05.2008, which is valid and subsisting.
3. The Respondent viz., 'Sudali Aachi Provision', is a partnership firm registered under the Indian Partnership Act, 1932, in which Mrs. Muthu Mari Ammal and Mr. G.Iyappan are partners, carrying on business of provision store at No.28, first Floor, Velachery, Bazzar Road, Balayagarden, Chennai – 600091. The Appellants object to the Respondent using the word 'Aachi' in their tradename viz., 'Sudali Aachi Provision' and have filed the suit in C.S. (Comm.Div.) No.558 of 2018 claiming the following reliefs:-
___________ Page 4 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 “ (a) granting a permanent injunction, restraining the defendant by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising, offering for sale and running the website using same or similar or identical Trade Mark SUDALI AACHI PROVISION/sudaliaachi.com or any other similar Trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other Trademark which is in any way visually or phonetically similar to the 1st plaintiff's trademark AACHI/AACHI SUPER STORE and use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trademark which is in any way visually, or phonetically similar to the plaintiffs' registered trademark No.1690157 in Class 42 or in any manner infringe the 1st plaintiff's registered trademark.
(b) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising, offering for sale and running the website using same or similar or identical Trade Mark SUDALI AACHI PROVISION/sudaliaachi.com or any other similar Trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any ___________ Page 5 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 way visually or deceptively or phonetically similar to the plaintiffs' trademark AACHI/AACHI SUPER STORE or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trademark which is in any way visually, or phonetically similar to the plaintiffs' Trademark AACHI/AACHI SUPER STORE or in any manner pass off the plaintiffs' goods.
(c) directing the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name Sudali Aachi Provision or other visually or phonetically similar trade mark used in the pouches and packets.
(d) directing the defendant to render an account of profits made by them by the use of the impugned trademark Sudali Aachi Provision and decree the suit for the profits found to have been made by the defendant, after the defendant has rendered accounts.”
4. The Respondent had filed Written Statement contending that the shop where they are carrying on business as provisional store has been named after Sudali Aachi, who is the grandmother of one of their partners and that ___________ Page 6 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 the word 'Aachi', which means grandmother in Tamil Language is a publici juris and has a separate distinct character prior to the registration of the trademark itself and entitled the protection under Section 30 of the Trade Marks Act, 1999. It is further pointed out that while the Appellants primarily dealt with masala and spices, the Respondent is the retailer and wholesalers of provisions, and though the Appellants claim to have obtained the trademark for 'Aachi Super Stores', they are not carrying any such wholesale or retail activity in the groceries and as such, they cannot restrain the Respondent from adopting the name chosen for their business.
5. The following issues had been framed for trial on the basis of the pleadings of the parties:-
“(i) Whether the word 'AACHI' is a publici juris available in public domain and entitled to protection under Section 30 of the Trade Marks Act, 1999?
(ii) Whether the plaintiffs' trademark “AACHI SUPER STORES” bearing No.1690157 under Class 42 is infringed by the defendant by using the name “SUDALI AACHI ___________ Page 7 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 PROVISION”?
(iii) Whether the mark of the defendant 'SUDALI AACHI PROVISION' on the whole or part is identical or deceptively similar to the registered trademark of the plaintiff 'AACHI SUPER STORES'?
(iv) Whether the plaintiffs are entitled for the relief of permanent injunction against the defendant from using the mark “SUDALI AACHI PROVISION” and the website Sudaliaachi.com?
(v) Whether the plaintiffs have suffered any monetary loss of goodwill on the defendant using the word 'SUDALI AACHI PROVISION'?
(vi) Any other relief ?” The learned Judge elaborately considered the rival submissions with reference to the evidence on record. After holding issues (i) to (iii) against the Appellants and that they were not entitled to the reliefs claimed, the suit was dismissed with costs.
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6. Mr. P.S.Raman, Learned Senior Counsel assisted by Ms. Gladys Daniel, Learned Counsel for the Appellants vehemently contended that the trademark 'Aachi' is distinctive of the goods of the Appellants alone and has obtained secondary meaning in the market of spices, masalas and other food products from the time of commencement of their business, and the inclusion of that word 'Aachi' in the tradename of 'Sudali Aachi Provision' by the Respondent causes deception and confusion in the minds of the consumers who would be misled to believe that some sort of business connection exists between the Appellants and the Respondent when there is none.
7. At this juncture, it would be useful to refer to the decision of the Hon'ble Supreme Court of India in Laxmikant V.Patel -vs- Chetanbhai Shah [(2002) 3 SCC 65], where the legal position on protection of trademark has been laid down as extracted below:-
“12. In Oertli v. Bowman (at p. 397) the gist of passing-off action was defined by stating that it was essential to the ___________ Page 9 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 success of any claim to passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiffs goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get up will be understood by the trade and the public in that country as meaning that the goods are the plaintiffs goods. It is in the nature of acquisition of a quasi-proprietary right to the exclusive use of the mark or get-up in relation to goods of that kind because of the plaintiff having used or made it known that the mark or get-up has relation to his goods. Such right is invaded by anyone using the same or some deceptively similar mark, get-up or name in relation to goods not of plaintiff. The three elements of passing off action are the reputation of goods, possibility of deception and likelihood of damages to the plaintiff. In our opinion, the same principle, which applies to trade mark, is applicable to trade name.” ___________ Page 10 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 The Division Bench of this Court in Orchid Chemicals & Pharamaceuticals Ltd -vs- Wockhardt Limited [(2013 (3) CTC 841)] has dealt with the question of exclusive right under the Trade Marks Act, 1999 (hereinafter referred to as 'the Act' for short) in the following words:-
“5.6. Sections 28 to 30 of the Trade Marks Act, 1999, deal with the effect of registration under Chapter IV of the Act. In so far as Section 28 of the Act is concerned, it deals with the rights conferred by registration. Section 28 of the Act specifically deals with the “exclusive” right under the Act. Therefore, a registered Proprietor of a Trade Mark can assert an exclusive right to use the Trade Mark under Section 28 of the Act. However, the said assertion is subject to two conditions. The first condition is that it is “subject to other provisions of the Act”. The second condition is that it is subject to its “validity”.
5.7. Now coming to Section 29 of the Act, it deals with an infringement of the registered Trade Mark. Section 29 of the Act specifies that an infringement would occur when an unregistered Proprietor uses a registered Trade Mark, which is likely to cause confusion on the part of the public or which is ___________ Page 11 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 likely to have an association with the registered Trade Mark.
Therefore, if one sees the object and reasons under Section 29 of the Act, it is clear that it is meant to be used against the person, who is not entitled to use the said Trade Mark under “law”. This is required to constitute an infringement. 5.8. Now coming to Section 30 of the Act, it limits the effect of registered Trade Mark. A perusal of Section 30 of the Act would show that Section 29 of the Act is subjected to it. Therefore, Section 30 of the Act is an overriding provision to Section 29 of the Act. However, the parameters stipulated under Section 30 of the Act will have to be complied with. For example, in a case where a party is using a registered Trade Mark belonging to another one, if it is in accordance with honest practices in industrial or commercial matters or is detrimental to the distinctive character of the different Trade Mark, no infringement would occur as it limits the effect of registered Trade Mark. Similarly, when the usage is indicative of a kind, quality or a quantity, then there will not be any infringement notwithstanding the registration. 5.9. While considering the statutory provisions, the Courts will have to read them together to understand the intending ___________ Page 12 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 purpose and object. Therefore, we are of the considered view that Sections 28 to 30 of the Trade Marks Act, 1999, are to be read in connection with each other. Such a yardstick will have to be adopted in view of the settled interpretative Principle of Harmonious Construction.” That apart, it must be recapitulated here that Section 9(1) of the Act creates an absolute prohibition on registration of descriptive marks as trademark, and the exception in its proviso enables such registration only if that trademark has acquired distinctiveness before the application for registration. Further, in terms of Section 32 of the Act, if any trademark has been registered in breach of Section 9(1) of that Act, it shall not be declared void if it has acquired distinctiveness after its registration and before commencement of any legal proceedings questioning its validity. As such, common words or descriptive words or names, cannot be treated as trademark unless they have acquired unimpeachable reputation and goodwill in the market across country so as to connote a secondary meaning for that relevant word. On a conspectus of the said legal principles, it would necessarily follow that in order to succeed in an action for injunction to restrain its usage, it is incumbent upon the concerned Plaintiff ___________ Page 13 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 to conclusively establish that the relevant word, which is publici juris identifying something else in common parlance, has lost such primacy on account of the synonymous connectivity of that word with the product for which the Plaintiff has adopted as trademark.
8. Though strong reliance is placed on the decision of the Hon'ble Supreme Court of India in T.V.Venugopal -vs- Ushodaya Enterprises Ltd., [(2011) 4 SCC 85] by the Appellants in support of their claim for exclusive right to use the word 'Aachi' as their trademark and there cannot be any qualms on the proposition of law laid down in that authoritative pronouncement, the manner in which the relevant word has been used by the Respondent, who is sought to be restrained from using it, would also assume significance to determine its applicability to the case on hand. The Respondent has explained that the provision store has been named after Sudali Aachi, who is the grandmother of one of the partners of its partnership firm. As rightly pointed out by the Learned Judge in the impugned judgment, apart from adding it as suffix to many other words ___________ Page 14 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 having various meanings, 'Aachi' is a description of an elderly lady in Tamil language. It is not uncommon for the people from time immemorial, especially in the southern parts of Tamil Nadu to address women by the word 'Aachi' either separately or after their names in veneration and such practice still continues to be in existence today. That apart, it is nobody's case that the Respondent is manufacturing or selling any product under the brand name of 'Sudali Aachi' in its provision store so as to compete with the business of the Appellants. As a matter of fact, even according to the Appellants, their products are some of the commodities made available for sale in that shop of the Respondent along with the products of other manufacturers, meaning thereby that the customers are definitely aware of the distinction between the products of Appellants and those of other manufacturers. Viewed from this perspective, there is neither any possibility of deception nor any likelihood of damages to the reputation of goodwill of the Appellants, so as to enforce any restraint on the tradename 'Sudali Aachi Provision' used by the Respondents. It has been held by another Division Bench of this Court in Malar Network (P) Ltd., -vs- Arun Prasath D (Order ___________ Page 15 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 dated 28.03.2011 in O.S.A Nos.175 and 176 of 2010) that the existence of a suffix before the word which has been registered as trademark by another person would dispel any doubt of any connection with the registered holder of that trademark. As such, there does not appear to be any acceptable reason to differ from the well considered conclusions arrived in the impugned judgment in this appeal.
9. Another plea made on behalf of the Appellants is that the red coloured oval shaped background in which the words 'Sudali Aachi Provision' has been inscribed by the Respondent in its logo imitates that of the Appellants. It is not possible to accept the said contention inasmuch as the said logo specifically contains the face of an elderly lady depicting the grandmother of one of the partners of the partnership firm of the respondent, at the top and the contains the words 'Sudali Aachi Provision' thereunder. Moreover, when the provision store of the Respondent is a standalone shop in a particular locality in a metropolitan city catering of needs of the residents there who constitute a substantially literate population, with ___________ Page 16 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 relatively a smaller scale of business transactions to that claimed by the Appellant, it is hard to believe that the customers would be misled at the first impression by the name board of the Respondent so as to infer that there may be some connection between the Appellants and the Respondent. In any event, the Appellants do not have any retail store though they claimed to have obtained registration for trademark 'Aachi Super Stores' in that regard.
10. While concluding, Learned Senior Counsel appearing for the Appellants made a fervent plea that the refusal to grant the relief of injunction for infringement and passing of goods against the Respondent in this case ought not to be construed as if the Appellants has not established their claim that their trademark has acquired distinctiveness and secondary meaning by the widespread consumption of their products in the market. It is made clear that the said question has not been determined in this Appeal for the reasons already explained and nothing said in the impugned judgment shall not impede the rights of the Appellants to independently ___________ Page 17 of 19 https://www.mhc.tn.gov.in/judis O.S.A. (CAD) No.161 of 2021 establish such claim in any future litigation as against third parties.
In the result, the Appeal, which does not deserve to be entertained, is dismissed. Consequently, the connected Civil Miscellaneous Petitions are closed. There shall be no order as to costs.
(M.N.B., ACJ.) (P.D.A., J.)
21.01.2022
Index : Yes/No
Speaking Order: Yes/No
dm/kv
To:
1. The Sub Assistant Registrar,
Original Side,
Madras High Court,
Chennai - 600 104.
___________
Page 18 of 19
https://www.mhc.tn.gov.in/judis
O.S.A. (CAD) No.161 of 2021
M.N.BHANDARI, ACJ
AND
P.D.AUDIKESAVALU,J.
Dm/kv
O.S.A. (CAD) No. 161 of 2021
and
C.M.P. Nos. 21504 and 21508 of 2021
21.01.2022
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