Madras High Court
Mr.A.D.Padmasingh Issac vs / on 22 September, 2021
Author: G.Jayachandran
Bench: G.Jayachandran
C.S.(Comm.Div.)No.152 of 2021
& O.A.Nos.228 & 229 of 2021
IN THE HIGHCOURT OF JUDICATURE AT MADRAS
Dated: 22.09.2021
Coram:
THE HONOURABLE DR.JUSTICE G.JAYACHANDRAN
C.S.(Comm.Div.)No.152 of 2021
& O.A.Nos.228 & 229 of 2021
1. Mr.A.D.Padmasingh Issac
Proprietor,
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 Private Limited,
No.1926, 34th Street, I Block,
Ishwarya Colony, Anna Nagar West,
Chennai – 600 040,
Represented by its Director,
Mr.Ashwin Pandian.
3. M/s.Heavenly Foods Pvt Limited,
No.1926, 34th Street, I Block,
Ishwarya Colony, Anna Nagar West,
Chennai – 600 040,
Represented by its Director,
Mrs.Shiny Ashwin. ... Plaintiffs
/versus/
Aachi Catering Services & Homely Mess
T.S.No.4562, East 4th Street,
Pudukkottai, Tamil Nadu – 622 001 ... Defendant
https://www.mhc.tn.gov.in/judis
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C.S.(Comm.Div.)No.152 of 2021
& O.A.Nos.228 & 229 of 2021
Prayer:- Civil Suit has been filed under Order IV Rule 1 of the Original Side
Rules and Order VII, Rule 1 of the C.P.C read with Sections 27(2), 29, 134 and
135 of the Trade Mark Act, 1999, praying for:-
(a). Granting a permanent injunction, restraining the Defendant, by
himself, his servants, agents, distributors, or anyone claiming through him from
manufacturing, selling, advertising and offering for sale using the name
'AACHI CATERING SERVICES & HOMELY MESS' or any other similar
Trade Mark name or similar sounding expression in any media and use the
same in name board, invoices, letter heads and visiting cards or by using any
other trade mark/name which is in any way visually or deceptively or
phonetically similar to the 1st Plaintiff's trade mark/name AACHI/AACHI
CHETTINAD RESTAURANT/AACHI KITCHEN and use the same in
pouches, packets or use the mark in invoices, letters heads and visiting cards or
part of their restaurant name any other trade literature or Menu card by using
any other trade mark which is in any way visually, or phonetically similar to the
1st Plaintiff's registered Trade Mark Nos. 838786, 1116254, 1479159, 1715718
and 2965624 or in any manner infringing the 1st Plaintiff's registered Trade
Marks referred herein.
b). Granting a permanent injunction restraining the Defendant by itself,
its agents or servants or anyone claiming through or under him any business
marketing, selling advertising using in trade literature, menu cards, invoices,
name boards, website, Internet advertisements the mark/name 'AACHI
CATERING SERVICES & HOMELY MESS' in relation to the Restaurant/
https://www.mhc.tn.gov.in/judis
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C.S.(Comm.Div.)No.152 of 2021
& O.A.Nos.228 & 229 of 2021
Catering/Mess or with respect to or any other food preparation or on any other
business the impugned trademark's/name which is in any manner deceptively or
phonetically confusingly similar to the 1st Plaintiff's Trade Mark/name
AACHI/AACHI CHETTINAD RESTAURANT/AACHI KITCHEN or in
any other manner pass off their Restaurant services, business or goods as and
for that of the Plaintiffs.
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
'AACHI CATERING SERVICES & HOMELY MESS' or other identical
trade mark used in the pouches and packets bearing the word AACHI/AACHI
CHETINAD RESTAURANT AACHI KITCHEN.
d). Directing the Defendant to render an account of profits made by them
by the use of the impugned trademark 'AACHI CATERING SERVICES &
HOMELY MESS' on the services referred and decree the suit for the profits
found to have been made by the Defendant, after the Defendant has rendered
accounts:
e). Directing the Defendant to pay to the Plaintiffs the costs to the suit.
For Plaintiffs : Mr.Gladys Daniel
For Defendant : exparte
JUDGMENT
https://www.mhc.tn.gov.in/judis 3/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 The 1st plaintiff is the Proprietor of Aachi Spices and Foods. The 2nd plaintiff is a Private Limited Company through which the 1 st defendant Spices and Masala products are manufactured and marketed.
2. The case of the plaintiff is that, apart from Masala and Spices they have also diversified their business and had started catering services, restaurants in the name of Aachi Kitchen. The 2 nd plaintiff has given licence to the 3rd plaintiff, to carry on trade in the name of Aachi Kitchen. According to the plaintiff, the trademark Aachi was first adopted by the plaintiff in the year 1999 and thereafter, the said name is used for their diversified business. As far as the mark Aachi Kitchen, same was registered on 30.07.2008 under Class 43 and it is valid till 30.07.2023. While so, the defendant has infringing the plaintiff's trademark Aachi Kitchen, Aachi/Aachi Chettinad Restaurant and carrying on catering business. This came to the notice of the plaintiff during the month of January 2021. The name adopted by the defendant is identical to the plaintiff's registered trademark. They are visually and phonetically similar. The using of the plaintiff's mark by the defendant is bound to cause confusion and deception in the minds of the public. Therefore, sought for permanent injunction restraining the defendant from infringing the plaintiff's trademark and https://www.mhc.tn.gov.in/judis 4/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 from passing off.
3. The defendant was served with the suit summons on 29.04.2021. In spite of receipt of the summons, the defendant has not entered appearance. Hence, the defendant called absent and set exparte.
4. The plaintiff has examined P.W.1 (Mr.B.Gnanasambandam) and marked 27 documents (Ex.P.1 to Ex.P.27) in support of the suit claim.
5. The Learned Counsel appearing for the plaintiff submitted that the plaintiff is engaged in manufacturing and marketing Spices and Food items since 1995 under the trade name Aachi. Nearly 525 products of the plaintiff's is sold under the trade name Aachi. They have diversified their business and involved in catering service under the name of Aachi Chettinad Restaurant and Aachi Kitchen. While so, the adoption of the word Aachi by the defendant for the catering service which is identical to the service rendered by the plaintiff under Class 43 is a patent infringement of the registered trademark of the plaintiff. The adoption of the mark by the defendant is wilful and dishonest to rid over the reputation of the plaintiff.
https://www.mhc.tn.gov.in/judis 5/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021
6. The Learned Counsel for the plaintiff would submit that the 2 nd defendant has given license to the 3rd defendant to trade under the registered Trademark of the plaintiff Aachi Kitchen and the 3rd defendant is running the restaurant at Chennai. Relying upon the license agreement entered between the 1st plaintiff, 2nd plaintiff and 3rd plaintiff, which are marked as Ex.P.10, Ex.P.11 and Ex.P.12 and the legal user certificate of the trademark Aachi/Aachi Chettinad Restaurant and Aachi Kitchen which are marked as Ex.P.23 series. The Learned Counsel for the plaintiff submitted that, the exclusive right of the plaintiff to use the Trademark Aachi cannot be adopted for similar goods or service.
7. Further, the Learned Counsel for the plaintiff would submit that the phonetically similar trademark adopted by the defendant has to be restrained, or else it will affect the goodwill and reputation of the plaintiff. The plaintiff registered the mark Aachi Kitchen and Aachi Chettinad Restaurant cannot be infringed by the defendant.
https://www.mhc.tn.gov.in/judis 6/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021
8. Ex.P.23 series are legal user certificates for the trademarks
(i).AACHI (word) for the goods under Class 30, (ii). The device Aachi Chettinad Restaurant for all kinds of Food preparations under Class 30, (iii).AACHI (LOGO) for goods under Class 30, (iv). AACHI KITCHEN for services under Class 43, (v). Aachi Kitchen With a twist mark for service under class 43 they all are valid and in force. While so, the defendant claiming himself as a copyright holder and the Trademark registered Proprietor of Aachi Catering is advertising through website that they are in trade for more than 55 years. However, in spite of receipt of the suit summons, the defendant has not appeared and placed documents to substantiate their claim. Therefore, it is to be held that the claim of the defendant has no right to use the registered trademark of the plaintiff Aachi for their catering business.
9. Considering the evidence particularly Ex.P.23 series and the website copy of the defendant marked as Ex.P.27, this Court is of the view that the plaintiff registered trademark has been dishonestly infringed by the defendant. Therefore, same has to be restrained. Accordingly, the Suit is Allowed as prayed for. With costs. Consequently, connected applications are https://www.mhc.tn.gov.in/judis 7/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 closed.
22.09.2021
Index :Yes/No
speaking order/non speaking order
bsm
List of Witness examined on the side of the Plaintiffs:-
Mr.B.Gnansambandam (P.W.1) List of Witness examined on the side of the Defendants:-
Nil List of the Exhibits marked on the side of the Plaintiffs:- Sl.Nos. Exhibits Dated Description of documents
1. Ex.P.1 12.08.2021 Original Authorization Letter
2. Ex.P.2 02.04.2019 Original Board Resolution & 10.09.2020
3. Ex.P.3 30.06.2006 Print Out of list of Products manufactured and marked by (series) the plaintiffs bearing the Trademark AACHI
4. Ex.P.4 30.06.2006 Photocopy of Certificate of Incorporation of Aachi Masala Foods Private Limited.
5. Ex.P.5 10.07.2006 Photocopy of Certificate of Commercial Tax Registration of Aachi Masala & Foods
6. Ex.P.6 31.03.2007 Photocopy of Dissolution Deed between Mrs.Rani Pandian and Mr.A.D.Padmasingh Issac dissolving the Partnership firm, Naveen Products.
7. Ex.P.7 28.12.2006 Photocopy of Certificate of Commercial Tax Registration & and Central Sales Tax of Aachi Spices & Foods. 03.01.2007
8. Ex.P.8 01.04.2007 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Issac trading as Aachi Spices and Foods and Aachi Masala Foods Private Limited.
9. Ex.P.9 17.03.2010 Photocopy of Certificate of Incorporation of Aachi Spices and Foods Private Limited.
https://www.mhc.tn.gov.in/judis 8/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 Sl.Nos. Exhibits Dated Description of documents
10. Ex.P.10 06.03.2010 Photocopy of Memorandum of Association of Aachi Spices and Foods Private Limited.
11. Ex.P.11 21.04.2010 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Isaac and Aachi Spices and Foods Private Limited.
12. Ex.P.12 21.04.2010 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Issac and Aachi Masala Foods Private Limited.
13. Ex.P.13 -- Photocopy of Certificate of Incorporation of M/s.Heavenly Foods (P) Ltd., and Memorandum and Articles of (series) Association.
14 Ex.P.14 04.03.2020 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Issac and Aachi Masala Foods (P) Ltd. 15 Ex.P.15 04.03.2020 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Issac and Aachi Spices and Foods (P) Ltd.
16 Ex.P.16 11.08.2014 Photocopy of Trademark License user Agreement between Mr.A.D.Padmasingh Issac, Aachi Spices and Foods and Heavenly Foods (P) Ltd.
17. Ex.P.17 --- Certified copy of plaintiff's Advertisement in RITZ Magazine.
18. Ex.P.18 --- Photocopy of Registration Certificates of the mark AACHI (series) in various countries around the world.
19. Ex.P.19 --- Photocopy of Madrid Protocol Registration in classes 29, 30, 43 with respect to the Trademark AACHI (Word) & (Device) designating 107 & 117 countries valid and subsisting as on date.
20. Ex.P.20 --- Certified copies of Samples sales invoices from the year 2000 to 2020 (series)
21. Ex.P.21 ---- Certified copies of Sample advertisement invoices and expenses from the year 1999-2020.
(series)
22. Ex.P.22. 02.03.2017 Certified copies of Chartered Accountant Certificates.
& 20.07.2020
23. Ex.P.23 --- Photocopies of the Legal use Certificate of the Trade Mark Nos.838786 in Class 30, dated 29.07.1999, 1116254 in https://www.mhc.tn.gov.in/judis 9/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 Sl.Nos. Exhibits Dated Description of documents (series) Class 30, dated 03.07.2002, 1479159 in class 30, dated 17.08.2006, 1715718 in class 43, dated 30.07.2008, 2965624 in class 43, dated 18.05.2015.
24. Ex.P.24 13.09.2016 Print out copy of opinion of Trademark Trial and Appeal Board, United States Patent and Trademark Office.
25. Ex.P.25 --- Original Aachi Kitchen's Name Board.
26. Ex.P.26 --- Original of Aachi Kitchen's Menu Card.
27. Ex.P.27 --- Web copy of Defendant's Website pages (65(B) certificate is filed).
https://www.mhc.tn.gov.in/judis 10/11 C.S.(Comm.Div.)No.152 of 2021 & O.A.Nos.228 & 229 of 2021 DR.G.JAYACHANDRAN,J.
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