Madras High Court
M/S. Cavinkaare Private Limited vs Panchaksharam Guru Moorthy on 1 August, 2016
Author: M.M.Sundresh
Bench: M.M.Sundresh
IN THE HIGH COURT OF JUDICATURE AT MADRAS Dated: 01.08.2016 Coram:
The Hon'ble Mr.Justice M.M.SUNDRESH C.S.Nos.204 and 467 of 2012 and O.A.Nos.231 to 234 of 2012 in C.S.No.204 of 2012 & O.A.No.1121 of 2013 in C.S.No.467 of 2012 M/s. CavinKaare Private Limited No.12, Cenotaph Road, Teynampet, Chennai - 600 018. .. Plaintiff in C.S.No.204/2012 Vs. Panchaksharam Guru Moorthy, Proprietor, Pee Gee Pharma, No.2/143, Sivadapuram S.O., Salem - 636 307. .. Defendant in C.S.No.204/2012 & Plaintiff in C.S.No.467/2012
1. Mr.Ranganathan Proprietor, M/s. CavinKaare Private Limited No.12, Cenotaph Road, Teynampet, Chennai - 600 018.
2. Mr.M.K.Sudarshan, General Manager, Legal and Secretariat, M/s. CavinKaare Private Limited No.12, Cenotaph Road, Teynampet, Chennai - 600 018.
3. Mr.R.Thazhalan .. Defendants in C.S.No.467/2012 The suit in C.S.No.204 of 2012 has been filed under Order IV Rule 1 of Original Side Rules and Order VII Rule 1 of Code of Civil Procedure read with Section 27, 135 and 142 of the Trademarks Act, 1999, for a judgment and decree:
(a) Direction declaring that the plaintiff is entitled to use their trademark "KARTHIKA" in respect of goods and services relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics and that the defendant's claim over the trademark "KARTIKA" or "KARTHIKA" or any other trademark which is identical with or deceptively similar to the said trademarks to the exclusion of the plaintiff is wholly unjustified;
(b) Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner issuing any notices, circulars, pamphlets, advertisements, handouts, complaints etc. alleging the use of the trademark "KARTHIKA" by the plaintiff to be illegal and unlawful or from claiming any exclusive right over the trademark "KARTIKA" or any other trademark which is deceptively similar to the said trademarks to the exclusion of the plaintiff;
(c) Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner interfering with the plaintiff's business under the trademark "KARTHIKA" or any other trademark which is identical with /deceptively similar to the said trademark in respect of goods and services relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics;
(d) Perpetual injunction restraining the defendant, its distributors, stockist, servants, agents, retailers, representatives or any one claiming under/through them from in any manner manufacturing, selling, offering for sale, stocking, advertising, either directly and /or indirectly any goods relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics under the trademark 'KARTIKA' either per-se or in combination and / or any other mark either in English or Tamil or Telugu or Kanada or Hindi or any other language, which is identical with and/ or deceptively similar to plaintiff's trademark "KARTHIKA" so as to pass off the defendant's products as and for the products of the plaintiff's or in any other manner whatsoever connected with the plaintiff; and for costs.
The suit in C.S.No.467 of 2012 has been filed under Order IV Rule 1 of Original Side Rules and Order VII Rule 1 of Code of Civil Procedure read with Section 29, 134, 135 and 142 of the Trademarks Act, 1999, for a judgment and decree:
(a) Permanent injunction restraining the defendants, their agents, their men and representatives, stockist and any one or any of them belong to them to trading, circulating, promoting, advertising, manufacturing specification of goods, Pharmaceuticals, Ayurvedhic Medical Preparations, Veterinary and sanitary substances infants and invalid foods, Plasters, Material for bandaging, material for stopping teeth, dental wax, disinfectants, preparation for killing weeds and destroying vermin and other allied products and airvertilizer, Hair oil, herbal lotion, cosmetic perfume in Tamil Nadu and all over India on the trademark of "Kartika";
(b) Mandatory injunction directing defendants, their agents, their men and representative, stockist to destroy all the product prepared, stocked, printed wrapper on the name of "Karthika" it is similar and deceptive and infringement of plaintiff trademark "Kartika".
(c) Declaration Co-existing agreement made dated 22.04.2008 is voidable.
(d) Permanent injunction restraining the defendants, agents, men, and representative, stockist and any one or any of them belong to them to trading, circulating, promoting, advertising, manufacturing specification of goods, Pharmaceuticals, Ayurvedhic Medical Preparations, Veterinary and sanitary substances infants and invalid foods, Plasters, Material for bandaging, material for stopping teeth, dental wax, disinfectants, preparation for killing weeds and destroying vermin and other allied products and airvertilizer, Hair oil, herbal lotion, cosmetic perfume in Tamil Nadu and all over India on the trademark of "Kartika";
For Plaintiff : Mr.Rahul Balaji For Defendant: Mr.K.Natarajan Judgment The suit in C.S.No.204 of 2012 has been filed seeking for the following reliefs:
(a) Direction declaring that the plaintiff is entitled to use their trademark "KARTHIKA" in respect of goods and services relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics and that the defendant's claim over the trademark "KARTIKA" or "KARTHIKA" or any other trademark which is identical with or deceptively similar to the said trademarks to the exclusion of the plaintiff is wholly unjustified;
(b) Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner issuing any notices, circulars, pamphlets, advertisements, handouts, complaints etc. alleging the use of the trademark "KARTHIKA" by the plaintiff to be illegal and unlawful or from claiming any exclusive right over the trademark "KARTIKA" or any other trademark which is deceptively similar to the said trademarks to the exclusion of the plaintiff;
(c) Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner interfering with the plaintiff's business under the trademark "KARTHIKA" or any other trademark which is identical with /deceptively similar to the said trademark in respect of goods and services relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics;
(d) Perpetual injunction restraining the defendant, its distributors, stockist, servants, agents, retailers, representatives or any one claiming under/through them from in any manner manufacturing, selling, offering for sale, stocking, advertising, either directly and /or indirectly any goods relating to cosmetics and medical & medicinal preparations other than Hair Vitalisers, Hair Oils and Hair tonics under the trademark 'KARTIKA' either per-se or in combination and / or any other mark either in English or Tamil or Telugu or Kanada or Hindi or any other language, which is identical with and/ or deceptively similar to plaintiff's trademark "KARTHIKA" so as to pass off the defendant's products as and for the products of the plaintiff's or in any other manner whatsoever connected with the plaintiff; and for costs.
2. Similarly, the suit in C.S.No.467 of 2012 has been filed for the following reliefs:
(a) Permanent injunction restraining the defendants, their agents, their men and representatives, stockist and any one or any of them belong to them to trading, circulating, promoting, advertising, manufacturing specification of goods, Pharmaceuticals, Ayurvedhic Medical Preparations, Veterinary and sanitary substances infants and invalid foods, Plasters, Material for bandaging, material for stopping teeth, dental wax, disinfectants, preparation for killing weeds and destroying vermin and other allied products and airvertilizer, Hair oil, herbal lotion, cosmetic perfume in Tamil Nadu and all over India on the trademark of "Kartika";
(b) Mandatory injunction directing defendants, their agents, their men and representative, stockist to destroy all the product prepared, stocked, printed wrapper on the name of "Karthika" it is similar and deceptive and infringement of plaintiff trademark "Kartika".
(c) Declaration Co-existing agreement made dated 22.04.2008 is voidable.
(d) Permanent injunction restraining the defendants, agents, men, and representative, stockist and any one or any of them belong to them to trading, circulating, promoting, advertising, manufacturing specification of goods, Pharmaceuticals, Ayurvedhic Medical Preparations, Veterinary and sanitary substances infants and invalid foods, Plasters, Material for bandaging, material for stopping teeth, dental wax, disinfectants, preparation for killing weeds and destroying vermin and other allied products and airvertilizer, Hair oil, herbal lotion, cosmetic perfume in Tamil Nadu and all over India on the trademark of "Kartika";
3. When the matter is taken up for hearing, both the counsel submit that the issue between the parties have been compromised in pursuant to the Joint Compromise Memo duly signed by the parties and attested by the respective counsel on 13.07.2016. Thus, it is submitted that the Joint Compromise Memo can be recorded and decree can be passed in C.S.No.204 of 2012. Pursuant to which the suit in C.S.No. 467 of 2012 may be dismissed as withdrawn.
4. Considering the Joint Compromise Memo, there shall be a compromise decree in terms of Joint Compromise Memo as follows:-
"1. The term Plaintiff and Defendant shall mean and include its heirs, executors, administrators, successors, authorized persons and assigns of each party;
2. The Defendant acknowledges the Plaintiff to the Proprietor of the trademark KARTHIKA and that the said trademark KARTHIKA is a well known mark as defined under Section 2(zg) of the Trade Marks Act, 1999;
3. The Defendant has assigned in perpetuity the trademark KARTIKA under TM Nos. 1069136 in Class 5 and 1069137 in Class 3 together with all goodwill and reputation thereto to and in favour of the plaintiff vide Assignment Deed dated 13.07.2016;
4. The Defendant acknowledges that the plaintiff shall have the exclusive right to use the trademark KARTHIKA/ KARTIKA in respect of all goods and in all languages;
5. The Defendant hereby undertakes not to manufacture/sale and/or distribute any goods under the trademark KARTIMKA or any other trademark which is identical with or deceptively similar to the plaintiff's trademark KARTHIKA in any language;
6. The Defendant submits to a decree as follows:
A. Declaration declaring that the plaintiff is entitled to use their trademark "KARTHIKA" in respect of all goods and services and that the defendant does not have any claim over the trademark "KARTIKA" or "KARTHIKA" or any other trademark which is identical with or deceptively similar to the said trademarks;
B. Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner issuing any notices, circulars, pamphlets, advertisements, handouts, complaints etc. alleging the use of the trademark "KARTHIKA" by the plaintiff to be illegal and unlawful or from claiming any right over the trademark "KARTIKA" or KARTHIKA or any other trademark which is deceptively similar to the said trademarks;
C. Permanent injunction restraining the defendant, his men, servants, agents, or any one claiming through or under him from in any manner interfering with the plaintiff's business under the trademark "KARTHIKA" or any other trademark which is identical with/deceptively similar to the said trademark in respect of any goods or services;
D. A perpetual injunction restraining the defendant, its distributors, stockist, servants, agents, retailers, representatives or any other person claiming under/ through them from in any manner manufacturing, selling, offering for sale, stocking, advertising, either directly and / or indirectly any goods under the trademark 'KARTIKA' either per-se in combination and / or any other mark either in English or Tamil or Telugu or Kanada or Hindi or any other language, which is identical with and/ or deceptively similar to plaintiff's trademark "KARTHIKA";
7. The suit filed by the defendant in C.S.No.467 of 2012 against the executives of the plaintiff before the Hon'ble Madras High Court shall be dismissed without cost;
8. In view of the above, the plaintiffs gives up its relief as prayed for in para 15(e) of the plaint;
9. The parties shall bear their respective costs in respect of the suits and they shall have no further claims whatsoever against each other;"
5. In the result, the suit in C.S.No.204 of 2012 is decreed in terms of Joint Compromise Memo. M.M.SUNDRESH, J gr.
6. In view of the compromise decree passed in C.S.No.204 of 2012, and pursuant to the terms of Joint Compromise Memo, the suit in C.S.No.467 of 2012 is dismissed as withdrawn. Consequently, connected Applications are closed.
01.08.2016 gr.
C.S.Nos. 204 and 467 of 2012