Madras High Court
Mr.A.D.Padmasingh Isaac vs M/S.Sruthi'S Food Products
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.S.(Comm. Div.)No.131 of 2015
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DAT E D : 29.07.2022
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
Civil Suit(Comm.Div) No.131 of 2015
1.Mr.A.D.Padmasingh Isaac
Trading as Aachi Spices and Foods,
Ola 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 Colonly,
Anna Nagar, Chennai – 600 040.
Rep. by its Director,
Mr.Ashwin Pandian ... Plaintiffs
vs.
M/s.Sruthi's Food Products,
No.14, 5th Street, 7th Cross Street,
V.R.Puram, Saligramam,
Chennai – 600 093. ... Defendant
The suit is filed under Order IV Rule 1 of the Original Side Rules
and Order VII Rule 1 of the C.P.C. R/W Section 27(2), 29, 134 and 135 of
the Trade Marks Act, 1999, (a) granting a permanent injunction, restraining
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C.S.(Comm. Div.)No.131 of 2015
the defendant, by itself, its servants, agents, distributors, or anyone claiming
through him from manufacturing, selling, adverting and offering for sale using
name or similar get up, and colour scheme used by the defendant's shown in
Document No.2 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 deceptively or phonetically similar
to the plaintiff's Trademark AACHI MASALA KULAMBU CHILLY
POWER as shown in Document No.1 or in relation to any masala items and
use the same pouches, packets of masalas and spices or any other goods 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 plaintiff's registered Trademark No.1318495, or in
any manner infringe the 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,
adverting and offering for sale using name or similar get up, and colour
scheme used by the defendant's shown in Document No.2 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
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C.S.(Comm. Div.)No.131 of 2015
deceptively or phonetically similar to the plaintiff's Trademark AACHI
MASALA KULAMBU CHILLY POWER as shown in Document No.1 or in
relation to nay masala items and use the same pouches, packets of masalas
and spices or any other goods 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 plaintiff's
registered Trademark AACHI MASALA KULAMBU CHILLY POWER as
shown in Document No.1, or in any manner pass off the plaintiff's goods; (c)
directing the defendant to surrender to the plaintiff all the packing material,
cartons, advertisement materials and hoardings, letter-heads, vising cards,
office stationery and all other materials containing/nearing the name
SRUTHI'S MASALA and packets in the Color Scheme and get up as shown
in Document No.2 or other deceptively similar trade mark used in the
pouches and packets in respect of masalas; (d) directing the defendant to
render an account of profits made by them by the use of the impugned
Trademark and get up as shown in Document No.2 on the goods referred and
decree the suit for the profits found to have been made by the defendant, after
the defendant has rendered accounts and (e) to pay the costs of the suit.
For Plaintiffs : Mr.P.S.Raman, senior advocate
Assisted by
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C.S.(Comm. Div.)No.131 of 2015
M/s. Gladys Danial
For Defendants : Mr.Rajesh Ramanathan
JUDGMENT
The suit was originally filed seeking relief in respect of alleged infringement of the plaintiffs' device mark AACHI MASALA KULAMBU CHILLY POWDER (Ex.P12) and passing off by the use of the label exhibited as Ex.P19.
2. After the suit was instituted, the defendant applied for and obtained cancellation of the device mark registration in respect of Ex.P19. Thereafter, the label exhibited as Ex.D4 is being used by the defendant. After the new label was adopted, the plaintiffs obtained permission to amend the plaint and the amended plaint is on record. The relief prayed for in the amended plaint is wider in scope.
3. Based on the pleading of parties, the Court framed the following issues on 06.07.2021:
_____________ https://www.mhc.tn.gov.in/judis Page No.4 of 13 C.S.(Comm. Div.)No.131 of 2015 (1) Whether the plaintiffs are the prior users of the color scheme, get up and layout of the suit Trademark?
(2) Whether there is an infringement of the registered Trademark of the first plaintiff by the defendant?
(3) Whether the label used by the defendant is substantially or deceptively similar to the registered label of the plaintiffs?
(4) Whether the plaintiffs are entitled to permanent injunction on account of passing off?
(5) Whether the defendant is entitled to use the impugned Trademark having already withdrawn the registration of the Trademark under No.1759431?
(6) Whether the plaintiffs are entitled to seek any relief in respect of the labels/registrations that were admittedly adopted subsequent to the date of the suit?
(7) To what other relief are the parties entitled to?
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4. The plaintiffs examined Mr.B.Gnana Sambandam as P.W.1 and exhibited 20 documents as Exs.P1 to P20. The defendant examined Mr.S.Hariharan as D.W.1 and exhibited 4 documents as Ex.D1 to D4.
5. Oral arguments were advanced by Mr.P.S.Raman, learned senior counsel, assisted by Ms.Gladys Daniel, learned counsel for the plaintiffs; and by Mr.Rajesh Ramanathan, learned counsel for the defendant.
6. Although the relief prayed for under the amended plaint is wide, learned senior counsel submitted that the plaintiffs are limiting the relief claimed to reliefs (a) and (b) under the unamended plaint. In specific, a permanent injunction to restrain infringement and passing off is claimed only in respect of the label exhibited as Ex.P19 in comparison to the plaintiffs' registered device mark Ex.P12.
7. Learned counsel for the defendant states that after the institution of the suit, an application was filed to cancel the registered device mark ('Ex.P19)'. Upon such cancellation, the said document was exhibited in _____________ https://www.mhc.tn.gov.in/judis Page No.6 of 13 C.S.(Comm. Div.)No.131 of 2015 evidence as Ex.D3. Therefore, he submits that the defendant has no objection to the suit being decreed as regards Ex.P19. However, he submits that he reserves the right to contest any proceeding instituted in respect of the label exhibited as Ex.D4.
8. In view of the above submissions, it has become unnecessary to enter findings on the issues framed by this Court earlier. Instead, the suit may be decreed in terms of prayers (a) & (b) of paragraph 32 of the unamended plaint. Since any legal proceedings based on Ex.D4 would constitute a fresh cause of action, it is open to both parties to raise all contentions in relation thereto if legal proceedings are instituted in respect thereof.
9. In the result, C.S.(Comm. Div)No.131 of 2015 is decreed in terms of prayers (a) & (b) in paragraph 32 of the unamended plaint by permanently restraining use by the defendant of the label exhibited as Ex.P19. For the sake of clarity, the said prayers are set out below:
''(a) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using name or _____________ https://www.mhc.tn.gov.in/judis Page No.7 of 13 C.S.(Comm. Div.)No.131 of 2015 similar get up, and colour scheme used by the defendant's shown in Document No.2 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 deceptively or phonetically similar to the plaintiff's Trademark AACHI MASALA KULAMBU CHILLY POWDER as shown in Document No.1 or in relation to any masala items and use the same pouches, packets of masalas and spices or any other goods 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 plaintiff's registered Trademark No.1318495, or in any manner infringe the 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 and offering for sale using name or similar get up, and colour scheme used by the defendant's shown in Document No.2 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 deceptively or phonetically similar to the plaintiff's Trademark AACHI MASALA _____________ https://www.mhc.tn.gov.in/judis Page No.8 of 13 C.S.(Comm. Div.)No.131 of 2015 KULAMBU CHILLY POWDER as shown in Document No.1 or in relation to nay masala items and use the same pouches, packets of masalas and spices or any other goods 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 plaintiff's registered Trademark AACHI MASALA KULAMBU CHILLY POWDER as shown in Document No.1, or in any manner pass off the plaintiff's goods.'' In view of the fact that the defendant voluntarily cancelled the impugned label shortly after institution of the suit, the parties shall bear their respective costs.
29.07.202 2 Index : Yes Internet : Yes rrg Plaintiffs' witnesses:
1.Mr.B.Gnana Sambandam : P.W.1 Defendants' witnesses:
1.Mr.S.Hariharan : D.W.1 Documents exhibited by the Plaintiff:
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1. Ex.P1 - Authorization latters
2. Ex.P2 30.06.2006 Photocopy of Certificate of Incorporation of Aachi Masala Foods P Ltd
3. Ex.P3 10.07.2006 Photocopy of Certificate of Commercial Tax Registration of Aachi Masala & Foods (P) Ltd
4. Ex.P4 - Photocopy of Dissolution Deed between Mrs.Rani Pandian and Mr.A.D.Padmasingh Isaac dissolving the partnership firm, Naveen Products.
5. Ex.P5 28.01.2006 Photocopy of Certificate of Commercial Tax Registration and Central Sales Tax of Aachi Spices & Foods
6. Ex.P6 01.04.2007 Photocopy of the Trademark License user Agreement between Mr.a.D.Padmasingh Isaac trading as Aachi Spices and Foods and Aachi Masala Foods Pvt Ltd.
7. Ex.P7 - List of products manufactured and marketed by the plaintiffs bearing the trademark AACHI
8. Ex.P8 17.03.2010 Photocopy of Certificate of incorporation of Aachi Spices and Foods P Ltd
9. Ex.P9 06.03.2010 Photocopy of Memorandum of Association of Aachi Spices and Foods Pvt Ltd
10. Ex.P10 21.04.2010 Photocopy of Trademark License user Agreement between Mr.a.D.Padmasingh Isaac and Aachi Spices and Foods Pvt Ltd.
11. Ex.P11 21.04.2010 Trademark License user Agreement between Mr.A.D.Padmasingh Isaac and Aachi Masala Foods P Ltd
12. Ex.P12 - Plaintiff's Label Aachi Masala Kulambu Chilly Powder.
13. Ex.P13 - Certified copy of the Sample Sales Invoices _____________ https://www.mhc.tn.gov.in/judis Page No.10 of 13 C.S.(Comm. Div.)No.131 of 2015 Sl.No Exhibits Date Particulars of Documents from the years 2007 – 2018.
14. Ex.P14 - Certified copy of the Sample Advertisement Invoices and Expenses from the years 1999 – 2019.
15. Ex.P15 - Certified copy of the Plaintiffs Advertisement in RITZ Magazine
16. Ex.P16 01.11.2004 Legal use certificate of Trademark No.1318495 in Class 30
17. Ex.P17 - Certified copy of the Chartered Accountant Certificates
18. Ex.P18 - Photocopy of the Registration Certificate of the mark AACHI in various countries around the world
19. Ex.P19 _ Defendant's Label Sruthi's Masala Kulambu Chilly Powder
20. Ex.P20 -
Legal Use Certificate under Nos.3352398, 3352399, 3352400, 3352401, 3352402, 33524403, 3352404 & 3352405 Documents exhibited by the Defendant:
Sl.No. Exhibits Date Particular of Deocuments
1. Ex.D1 24.09.2007 Photocopy of the Commercial Tax Registration
2. Ex.D2 13.02.2015 Photocopy of Food Safety Licence
3. Ex.D3 19.08.2020 Printout of the cancellation request in Form TM P along with Online status of the Trademark downloaded from the Trademarks Registry Online database
4. Ex.D4 - Original Sample of the new label _____________ https://www.mhc.tn.gov.in/judis Page No.11 of 13 C.S.(Comm. Div.)No.131 of 2015 SKRJ SENTHILKUMAR RAMAMOORTHY, J.
rrg _____________ https://www.mhc.tn.gov.in/judis Page No.12 of 13 C.S.(Comm. Div.)No.131 of 2015 Pre-Delivery Judgment C.S.(Comm.Div)No.131 of 2015 29.07.2022 _____________ https://www.mhc.tn.gov.in/judis Page No.13 of 13