Bangalore District Court
; Madhu Products vs Akshaya Industries on 29 August, 2015
IN THE COURT OF XVIII ADDL.CITY CIVIL JUDGE,
AT BENGALURU CITY. [CCH.NO.10]
Dated this day the 29th August, 2015
PRESENT
SRI K.AMARANARAYANA, B.Com., LL.M.
XVIII Addl.City Civil & Sessions Judge.
O.S.No.770/2013
Plaintiff ; Madhu Products,
A Proprietary Concern,
Having its office at
(Old No.101/A) New No.46,
2nd Main, Industrial Town,
Rajajinagar, Bangalore - 44.
Proprietor Rawat Singh Parihar,
Reptd.by his PA Holder
Kuldeep Singh.
[Rep. by Sri B.C.T. Advocate]
--V/s--
Defendant : Akshaya Industries,
A proprietary Concern,
Having its office at
No.524/664,
ABM Shankrappa Industrial
Estate, Vishwaneedam Post,
--2-- O.S.No.770/2013
Magadi Main Road,
Sunkadakatte,
Bangalore-91.
Reptd. by its Sold Proprietor
Sri.Venkatesh.
[Rep.By.Sri.J.P. Advocate]
Date of institution of suit ; 24.01.2013
Nature of the (Suit on pronote; Permanent Injunction,
Suit for declaration & Delivery of articles,
possession, Suit for injunction) Render Accounts &
damages.
Date of commencement of ; 06.06.2014
recording of the evidence.
Date on which the Judgment ; 29.8.2015
was pronounced.
Years Months days
Total duration: 02 05 01
[K.AMARANARAYANA]
XVIII Addl.City Civil Judge,
Bengaluru.
JUDGMENT
The plaintiff filed this suit against the defendant prays to pass judgment and decree for permanent injunction
--3-- O.S.No.770/2013 restraining the defendant, by itself or through the officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through the defendant in any manner from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing registered trade mark "NANDI" and "Nandini" its label and trade dress or any other trade mark identical or deceptively similar to plaintiff's registered trade mark, label and trade dress, in relation to stationary goods viz., box files, or any other allied and cognate goods thereto and for doing any things or acts amounting to or likely to amount to passing off the defendant's goods as that of plaintiff's goods and business and in violation of plaintiff's rights in plaintiff's registered trade mark "NANDI" and "nandini" and its label, To restrain the defendant pursuant to section 135 of Trade Marks Act - 1999 from disposing of or dealing with their assets and all their business assets including movable and immovable properties and those of all its dealers, suppliers, manufacturers, agents etc as it would adversely affect plaintiffs ability to recover damages, cost and other remedies prayed for, further to restrain the defendant,by itself
--4-- O.S.No.770/2013 or through the officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through the defendant in any manner from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing artistic content of the registered Copyright for the marks "NANDI" and its label;
For an order to deliver to the plaintiff all the goods bearing trade mark NANDINI and its label or an other trademarks identical or deceptively similar to plaintiff's trade mark "NANDI" and "nandini" and any other incriminating copyrighted material including blocks, labels, cartons, display boards, sign boards, trade literature and other advertising materials for the purpose of destruction.
To direct the defendant to disclose the places and facilities where plaintiff's trademarks "NANDI" and "nandini" are applied to the counterfeit goods, To render accounts of profits earned by the defendant by their unauthorized and illegal activities and a decree for the amount so found due on such rendition of accounts, To punitive damages against the defendant for employing deception and willfully applying the registered
--5-- O.S.No.770/2013 trademarks and trade dress and indulging in selling counterfeit goods with impunity and for costs.
2. Case of the plaintiff in brief is as follows:
(a). The plaintiff is the proprietary concern and reputed manufacturer and one of the largest supplier and seller of stationery goods, including office box files that are used for filing and storing documents. Plaintiff has been manufacturing the said goods since 1978 and selling such stationary goods in India in the trade names such as NANDI, nandini, NANDU and IBID. Plaintiff also obtain Value Added Tax Registration Certificate from Government of Karnataka. It has achieved a turn over of Rs.1,08,32,416-08 during the year 2012-13. They are using he trademark since 1978. They adopted the trademark to attract the attention of the customers and fix the trademark "nandini" and "NANDI"
in their minds. The Plaintiff obtained registration of trademark bearing registration No.394947 & 529381 in respect of all types of box files, notebooks, registers, account books and scribbling pads in class 16.
--6-- O.S.No.770/2013
(b). The registration was granted on 6.9.1982 for "NANDI" and on 30.11.1987 for "nandini" and it has been renewed from time to time. They coined the trademarks for distinguishing their goods. They have spent considerable amount of time and money in promoting the goods bearing the trademark 'NANDI' and 'nandini'. They acquired accredited position of well-known mark by maintaining sheer good quality of goods manufactured by them. They also filed O.S.No.5480/1990 before City Civil Court, Bangalore and application No.529381 in class 16 against the infringers/ defendants and the same was decreed. In July 2012 the came to know the defendant using their trademarks on its box files by using the trade name of NANDINI. The Plaintiff got issued cease and desist notice dated ;12.7.2012 to the defendant. The defendant gave untenable reply. The spurious and counterfeit goods of the defendant bear the similar trademarks of both "NANDI" and "nandini".
(c). The defendant is manufacturing, using, selling spurious box files by using the trademark that is deceptively similar to that of the plaintiff and causing great loss to them.
The goods of the defendant is sub-standard quality. The
--7-- O.S.No.770/2013
plaintiff has registered his trademark under TM Act and under section 23 of Copy Right Act. The plaintiff is the author and first owner of the original artistic style, presentation, arrangement of elements and colour combination of the trademarks "NANDI" and "nandini". The unauthorized use of plaintiff's trade mark by the defendant in relation to goods of inferior quality, is certainly causing and would continue to cause confusion in the minds of the customers and the traders, resulting in irreparable loss and injury to the precious reputation and goodwill enjoyed by the plaintiff. Hence, the suit is filed for the above reliefs.
3. (a).The defendant appeared through his counsel and filed the written statement. In the written statement defendant denied the plaint averments besides contending that the animal that is depicted in the office box files manufactured and marketed by the plaintiff relates to Basavanna in a sitting posture and whereas the animal that is depicted in the office box files manufactured by the defendant is a cow standing posture with patches on its body and that the two animals do not look deceptively similar and any ordinary human being can identify the animal and more so the words, Nandini
--8-- O.S.No.770/2013 depicted in the office box files manufactured by them in Capital letters. The very appearance and comparison of two products will clearly establish the fact that they are distinctly different and do not appear to be the same. The application filed by the defendant is pending for registration, plaintiff has not raised any objections before the competent authority and failed to invoke efficacious relief before the Registrar of Trade Marks.
b). The word Nandini used by the defendant are being sold genuinely to bonafide customers who are able to identify the difference between the office box files manufactured by plaintiff and defendant. Plaintiff unable to cope up with the quality demand of the public and not being efficient to counter the quality of defendant's office box files, has approached the court for injunctive relief. Defendant has not committed any breach of the trademark provision and is a bonafide manufacturer and marketer of the office box files and other stationary goods and has earned a goodwill and name through its customers by good quality work and material used. Plaintiff being jealous of the fact has filed the false suit. Plaintiff is not entitled to any relief sought in the suit as the defendant has not
--9-- O.S.No.770/2013 caused any infringement of the alleged rights of the plaintiff. On the above grounds prays to dismiss the suit with exemplary costs of Rs.1,00,000/- under section 35 (A) of CPC.
4. On the basis of the above pleadings, my predecessor has framed the following issues:
1. Whether the plaintiff proves that the defendant has infringed the trademark "NANDI" & "nandini" by using NANDINI?
2. Whether the plaintiff is entitled for the reliefs sought for?
3. To what decree or order?
5. The plaintiff in order to prove its case, got examined its SPA Holder as PW1, got marked Ex.P1 to P22 and MO.1 to MO.3 and closed its side. The proprietor of defendant company is examined as DW1, got marked Ex.D1 and Ex.D2 and closed their side.
6. Heard the arguments of Sri.B.C.T., advocate appearing for the plaintiff and Sri.J.P advocate appearing for
--10-- O.S.No.770/2013 the defendant. The learned counsels appearing for the plaintiff and the defendant have submitted the written arguments. The learned counsel appearing for plaintiff has relied upon the decisions reported in :
1. 1965(1) SCR 737 (KAVIRAJ PADIT DURGA DUTT SHARMA -VS- NAVRATNA PHARMACEUTICAL).
2. 1969(2) SCC 131 (K.R.CHINNAKRISHNA CHETIAR -VS- SHRI AMBAL AND CO., MADRA AND ANOTHER).
3. AIR 1972 SC 1359 (PARLE PRODUCTS (P) LTD., -VS- JP & CO, MYSORE).
4. AIR 1960 SC 142 (CORN PRODUCTS -
VS- SHANGRILA FOOD PRODUCTS LTD.).
5. (2001) 5 SCC 73 ( CADILA HEALTHCARE LIMITED -VS- CADILA PHARMACEUTICALS LIMITED).
6. MIPR 2011 (2) 0283 ( MAHASHAIAN DI HATTI LTD., -VS- MHS MASALA).
The learned counsel appearing for the defendant has relied upon the decision reported in AIR 1994 DELHI 288 (M/s
--11-- O.S.No.770/2013 John Oakey & Mohan Limited -V/s- M/s. Million Abrasives Private Limited and another). Perused the written arguments filed by both sides and the decisions relied therein.
7. My findings to the above issues are as under:
Issue No.1 ; Affirmative.
Issue No.2 ; Partly Affirmative.
Issue No.3 ; As per final order,
For the following:
8. Issue No's.1 to 3: To avoid repetition all the issues taken together for my consideration. The suit is filed for bare injunction and consequential relief of rendering accounts and damages. The plaintiff as well as the defendant being the proprietary concerns is in the field of business of manufacturing, supplying, selling of stationary goods including office box files that are used for filing and storing documents. The plaintiff asserts it has been manufacturing and marketing the said goods since 1978 in the trade names such NANDI, nandini, and NANDU and IDBID. The defendant denied the plaintiffs assertion and that they under the usage of
--12-- O.S.No.770/2013 the trade name 'NANDINI' since 1998. It is to be noted that the defendant denied the fact the plaintiff is a registered proprietor of the trade name NANDI and nandini. The suit is filed for infringement as well as for passing off. Looking to the prayer of the plaintiff and the defense taken in the case, the burden is upon the plaintiff to prove that it is registered proprietor of the trademark NANDI and nandini.
9. Let me peruse the evidence placed on record by both plaintiff as well as defendant. A perusal of Ex.D1 and Ex.D2 produced by the defendant it is well founded that the defendant is not a registered proprietor of the trademark NANDINI. Ex.D1 and Ex.D2 evident that the defendant filed an application before Trademark Registry 20.12.2011 for issue of trademark NANDINI. Mere filling of application for registration of trademark does not give any valid right to the defendant to use the said mark. The plaintiff has relied upon Ex.P4 and Ex.P5 to show that they have valid and exclusive right to use the trademark NANDI and nandini. The defendant though cross-examined PW1, nothing is elicited to disbelieve the contents of Ex.P4 and Ex.P5. Therefore is no reason to disbelieve Ex.P4 and Ex.P5. Ex.P4 evident that the
--13-- O.S.No.770/2013 plaintiff became the registered proprietor of the trademark 'NANDI' and 'nandini' with logo Nandi. Ex.P4 evident that the plaintiff registered the trademark NANDI on 16.09.1982 and the trademark under its usage since 1.08.1978.
10. Ex.P5 evident that the plaintiff registered the trademark 'nandini' on 30.11.1987 and the trademark under its usage since 1.08.1978. Admittedly, the defendant had no business as that of the plaintiff in the year 1978 and subsequently till 1998. Therefore, it is well founded that the plaintiff is the prior user of the trademark NANDI and nandini and obtained registration ten years prior to the date of defendant filing an application for grant of trademark. The plaintiff is authorized to manufacture, supply and sell the goods classified under Class - 16 of the Act under the trademark certificates Ex.P4 - 394947 and Ex.P5 - 4818156. Thus the plaintiff established the fact it is a registered proprietor of the trademarks NANDI and nandini with logo Nandi.
11. A perusal of cross-examination of PW1. The defendant did not dispute the registration of plaintiff's logo in
--14-- O.S.No.770/2013 the Trademark Certificates Ex.P4 and Ex.P5. Ex.P4 and Ex.P5 empowers the plaintiff to have monopoly over the trademark "NANDI and nandini". Thus, no one will have a right to use the same mark and logo without prior permission and license of the plaintiff. Ex.P2 which is an undisputed document confirm that the plaintiff has been trade in respect of the goods classified under Class - 16 since 1978. Ex.P3 is the statement of sales and advertisement for the years 1978 to 2012 would disclose that the plaintiff had a good turn over of sales of office files used for storing the documents under the trademark "NANDI and nandini" since 1978. Looking to the sales turn over since 1978 the plaintiff had acquired good will and reputation in the field of office files business under the word mark "NANDI and nandini". There is no evidence placed by the defendant to indicate that it has been doing business since 1978 under the mark "NANDINI". Admittedly, there is no registration of the word mark "NANDINI" in favour of defendant. Therefore, the contention of the defendant that it is a prior user of the trademark "NANDINI" cannot be accepted. Thus, the prior usage of the trademark "NANDI and nandini" by the plaintiff is well founded.
--15-- O.S.No.770/2013
12. The plaintiff's trademark "NANDI and nandini"
is registered one and it has monopoly over the same. The trademark "NANDINI" adopted by the defendant is unregistered one. The plaintiff has acquired copyright over the label by registration in respect of the label "NANDI and nandini". On comparison of the trademarks of both plaintiff and the defendant, one by one there is phonetic similarity. The colour scheme, background and set-up adopted by the defendant on the file is similar in toto as that of the label adopted by the plaintiff. It is seen from the cross-examination of DW1 that the defendant aware about the trademark of plaintiff and failed to stop using the mark NANDI and nandini and the label therein. Thus, the deception on the part of the defendant is well founded. Therefore it is held that the trademark NANDINI adopted by the defendant in the similar business which the plaintiff is doing is deceptively similar.
13. Whether there is a likely hood of customers getting confused with the mark "NANDINI" as of plaintiffs mark "NANDI and nandini". Normally educated and little bit higher class will ask for a filed Nandi or nandini in the shops. The customer may not be in a position to make out the brand.
--16-- O.S.No.770/2013 Thus in all probability the trademark adopted by the defendant will create confusion among the customers. In that event, the possibility of passing off of goods by the defendant as that of plaintiff by adopting the trademark "NANDINI" is well founded.
14. The artistic work of the defendant's label "NANDINI" is similar as that of the plaintiff's label. The plaintiff established the prior usage of the trademark "NANDI and nandini". The evidence on record establish that the plaintiff is engaged in the business of manufacturing, selling, marketing, trading stationery and office files. The turn over of the plaintiff establishes its good will and reputation in the field of said business. There is nothing on record placed by the defendant about their good will and reputation in the said field of business. The plaintiff's goodwill and reputation in the business of stationery and office file is well founded.
15. The plaintiff established the fact that it is a registered proprietor of the trademark "NANDI and nandini"
since 1978. The defendant mark NANDINI is deceptively similar to the trademark of the plaintiff. The plaintiff's
--17-- O.S.No.770/2013 trademark is valid. Section 28 of the Act confers exclusive right on the plaintiff to the use of the trademark "NANDI and nandini" in relation to the goods and services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark by the defendant. The defendant resisted the plaintiffs call to stop using the trademark NANDINI and the label. Thus, it is clear that the defendant not being a registered proprietor found using the trademark, which is identical and deceptively similar to the trademark of the plaintiff. Thereby the defendant has infringed the registered trademark of the plaintiff. Thus, the defendant is liable under section 29 of TM Act.
16. Therefore, in view of foregoing reasons and under the circumstances, it is proper to restrain the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing registered trade mark "NANDI" and "Nandini" its label and trade dress or any other trade mark identical or deceptively similar to plaintiff's registered trade mark, label and trade dress, in relation to stationary goods viz., box files, or any other allied and cognate goods thereto and for doing any things or acts
--18-- O.S.No.770/2013 amounting to or likely to amount to infringement and passing off the defendant's goods as that of plaintiff's goods and business and in violation of plaintiff's rights in plaintiff's registered trade mark "NANDI" and "nandini" and its label.
17. Further It is also proper to restrain the defenant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing artistic content of the registered Copyright for the marks "NANDI" and its label. Further, the defendant shall have to be directed to deliver to the plaintiff all the goods bearing trademark NANDINI and its label or any other trademarks, which are identical or deceptively similar to plaintiff's trademark "NANDI" and "nandini". Further, the defendant shall have to be directed to render honestly and faithfully true account of the profit that they have derived by promoting their firm by using offending trademark and label "NANDI" and "nandini" pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and label. If the defendant is allowed to continue to use the trademark, it amounts to abuse of process of law and the very purpose of provisions of trademark would become infructuous. The plaintiff is not entitled for a decree for issue of direction
--19-- O.S.No.770/2013 to the defendant to disclose the names of dealers, suppliers, manufacturers and agents and the places applied to counterfeit goods and for punitive damages. Thus, the plaintiff is entitled for a decree of permanent injunction and other relief as sought against the defendant. Hence, I answered Issue No's.1 to 3 accordingly and proceed to pass the following:
ORDER The suit is partly decreed with costs. The defendant, its officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through them in any manner are hereby restrained by way of permanent injunction from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing registered trade mark "NANDI" and "Nandini" its label and trade dress or any other trade mark identical or deceptively similar to plaintiff's registered trade mark, label and trade dress, in relation to stationary goods viz., box files, or any other allied and cognate goods thereto and for doing any things or acts amounting to or likely to amount to infringement and passing off the defendant's goods as that of plaintiff's goods and business and in violation of plaintiff's rights
--20-- O.S.No.770/2013 in plaintiff's registered trade mark "NANDI" and "nandini" and its label.
Further the defendant, its directors, officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through them in any manner are hereby restrained by way permanent injunction from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing artistic content of the registered Copyright for the marks "NANDI" and its label;
Further the defendant is directed to deliver to the plaintiff all the goods bearing trademark NANDINI and its label or an other trademarks identical or deceptively similar to plaintiff's trade mark "NANDI" and "nandini" and any other incriminating copyrighted material including blocks, labels, cartons, display boards, sign boards, trade literature and other advertising materials for the purpose of destruction.
Further, the defendant is hereby directed to render honestly and faithfully true account of the profit that they have derived by promoting their firm by using offending trademark and label "NANDI" and "nandini" pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and label.
The prayer sought by the plaintiff at prayer (b), (e)
--21-- O.S.No.770/2013 and (g) is hereby dismissed.
Draw decree accordingly.
[Prepared by me on the laptop, print out by the judgment writer, corrected by me and then pronounced in the open court dated this day the 29th August, 2015].
[K. AMARANARAYANA] XVIII Addl. City Civil & Sessions Judge, Bengaluru.
A N N E X U R E;
No. of witnesses examined on behalf of plaintiff:
PW1 ; Kuldeep Singh.
No. of documents marked on behalf of plaintiff:
Ex.P1 : Special Power of Attorney.
Ex.P2 : Certification of Registration.
Ex.P3 : Statement of Sales and Advertisements
for the years 1978 to 2012.
Ex.P4 : Trademark Certificate No.394947 under
Class - 16 of Nandi.
Ex.P5 ; Trademark Certificate No.481756 under
Class - 16 Nandini.
Ex.P6 ; Profit and Loss Account for the years
2005 to 2012.
Ex.P7 ; C/C of orders passed by the Joint Registrar
of Trademarks on 8.3.2004 on the
application No.529361 in Class - 16.
Ex.P8 ; C/C of Judgment and decree passed in
O.S.No.5480/1990.
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Ex.P9 ; Copy of complaint filed against the
defendant on 5.3.2003.
Ex.P10 ; Show cause notice issued by the Trademark
Registry to the defendant.
Ex.P11 & 12; Intimations of date of hearing to us and the
defendant.
Ex.P13 ; C/C of orders passed by the TM Registry.
Ex.P14 ; Legal issued by the plaintiff to the
defendant.
Ex.P15 ; Reply given by the defendant.
Ex.P16 to 18; Purchase Orders.
Ex.P19 & 19(a); Caution Notice issued in The New Indian Express dated; 22.6.2012 and relevant portion.
Ex.P20 & 20(a); Caution Notice issued in Kannada Prabha News paper dated; 22.6.2012 and relevant portion.
Ex.P21 & 21(a); Caution Notice issued in Rajasthan Hindi Pathrika and relevant portion at page-5. Ex.P22 ; Extract of Register of Copyrights with Logo.
No. of witnesses examined on behalf of defendant:
DW1 : Venkatesh.
No of documents marked on behalf of defendant:
Ex.D1 : Application for registration of TM. Ex.D2 : Additional representation submitted to TM Registry.
XVIII Addl. City Civil & Sessions Judge Bengaluru.
Judgment pronounced in the open court as per separate judgment. Operative portion of judgment is as follows:
ORDER The suit is partly decreed with costs. The defendant, its officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through them in any manner are hereby restrained by way of permanent injunction from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing registered trade mark "NANDI" and "Nandini" its label and trade dress or any other trade mark identical or deceptively similar to plaintiff's registered trade mark, label and trade dress, in relation to stationary goods viz., box files, or any other allied and cognate goods thereto and for doing any things or acts amounting to or likely to amount to infringement and passing off the defendant's goods as that of plaintiff's goods and business and in violation of plaintiff's rights in plaintiff's registered trade mark "NANDI" and "nandini" and its label.
Further the defendant, its directors, officers, servants, agents, assigns, distributors, successors-in-business, legal representatives, or any one claiming through them in any manner are hereby restrained by way permanent injunction from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with the goods bearing artistic content of the registered Copyright for the marks "NANDI" and its label;
Further the defendant is directed to deliver to the plaintiff all the goods bearing trade mark NANDINI and its label or an other trademarks identical or deceptively similar to plaintiff's trade mark "NANDI" and "nandini" and any other incriminating copyrighted material including blocks, labels, cartons, display boards, sign boards, trade literature and other advertising materials for the purpose of destruction.
Further, the defendant is hereby directed to render honestly and faithfully true account of the profit that they have derived by promoting their firm by using offending trademark and label "NANDI" and "nandini" pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and label.
The prayer sought by the plaintiff at prayer (b), (e) and (g) is hereby dismissed.
Draw decree accordingly.
[K.AMARANARAYANA] XVIII Addl.City Civil & Sessions Judge, Bengaluru.