Madras High Court
Mayil Traders vs Thiyagarajan on 19 May, 2011
Author: T.Mathivanan
Bench: T.Mathivanan
In the High Court of Judicature at Madras
Dated 19.05.2011
Coram
The Honourable Mr. Justice T.MATHIVANAN
C.M.P.No.8 of 2011
and
A.S No.769 of 2004
Mayil Traders,
Registered Firm rep.by
its Partner Tmt.Vedhambal
85/88 R.Pudupalayam Village,
Rasipuram Taluk,
Salem District. ... Appellant
..vs..
Thiyagarajan ... Respondent
Appeal under Section 96 of Civil Procedure Code, against the judgment and decree dated 26.08.2003 and made in O.S.No.207 of 1994 on the file of the Court of Additional District and Sessions Judge, Salem.
For Appellant Mr. K.Chandramouli
Senior Counsel for
Mr. S. Viswanathan
For Respondent : Mr.Ramesh Venkatachalapathy
.. .. ..
JUDGMENT
This appeal by the plaintiff is directed against the Judgment and decree dated 26.08.2003 and made in O.S.No.207 of 1994 on the file of the learned Additional District and Sessions Judge, Salem.
2. The legal status of the parties to the suit need not be changed and it may be continued in this appeal as it is in the suit.
3. The excerpt of the case of parties to the appeal is being detailed as under.
Plaintiff is a registered firm under the name and style of MAYIL TRADERS, represented by it's partner Mrs.Vedambal, doing business in manufacturing and selling high quality cigars in the registered Trade mark "RATHAM" both in device and words and "RATHAM" in Tamil script " ujk; " under clause 34 on an all India basis under the Trade and Merchandise Marks Act 1958. The Plaintiff has been doing this business for over 55 years and earned good reputation in the market.
4. On account of wide sales promotional network and the high standard and quality maintained by the plaintiff, the trade and public have come closer to associate the said trade mark exclusively with the cigars originating from the plaintiff. The plaintiff is doing good business under the said trade mark in Salem, Trichy, Dharmapuri and South Arcot districts. The turnover in business which was 3 lakhs in 1979 has now been risen to over 20 lakhs.
5. The plaintiff came to know that the defendant has started manufacturing cigars under the name of "RAGAM" "ufk;" and doing business under the name and style of "KUDIL TRADERS". It can easily be inferred at a glance of the labels of the plaintiff and the defendant, that the Tamil words "RATHAM' "ujk;" and "RAGAM" "ufk;" are deceptively similar. The get up of this label is exactly similar to the label of the plaintiff.
6. Further the defendant has printed the name "RAGAM" (ufk;) device in the label which is similar to the device "RATHAM" (ujk;) of the plaintiff. Therefore, the slavish imitation is patent. In the ring label also the device "RAGAM" (ufk;) is printed similar to the device of "RATHAM" (ujk;).
7. The get up of the wrapper of the defendant would clearly show that it is intended to deceive the consumers and traders and cause confusion in the trade. A casual look by anybody would show that the get up of the wrapper of the plaintiff and that of the defendant are exactly similar. Except printing the word 'kudil' instead of 'Mayil' the other things are copying of the plaintiff's wrapper. A look at the ring label of the plaintiff and the one used by the defendant would clearly show that it is impossible to distinguish the two. Instead of choosing any other name, the defendant has chosen the word "RAGAM" (ufk;) i.e only the middle letters are changed and that change cannot be easily seen and distinguished by an unwary and mostly illiterate villagers who are the main consumers. The cigars manufactured by the defendant is of an inferior quality using an inferior tobacco and he is passing off the same in the market as the well known and reputed goods of the plaintiff to make unlawful gains at the expense of the plaintiff.
8. The plaintiff received complaints about the colourable imitation of his registered trademark and made enquiries and found that the defendant is doing such colourable imitation and marketing the same as that of the plaintiff and deceived the public at large. since the device "RATHAM" (ujk;) is the registered trademark of the plaintiff firm, nobody else can use the said device for the cigars. Hence this suit."
9. The defendant has contended in his written statement that the copies of documents No. 2,3 & 4 annexed along with the plaint list do not contain the representation said to have been annexed to the Trade Mark No. 386231 or 386230 or 348427. Copies only state as follows:
" Certified that the Trade Mark of which a representation is annexed hereto has been registered in Para B of the Register in the names of R.Padmanabhan, V.Vedhambal, Kamaraj and Sumathi, Trading as Mayil Traders, Pudupalayam Post, Rasipuram Taluk, Salem District, Tamil Nadu in class 34 under Certificate No.386231 as on date 9.2.1982. "
This certificate is issued on 14.3.1986. It is also stated in the certificate, as follows.
" This certificate is not for use in Legal Proceedings or for obtaining Registration Abroad."
10. There is absolutely no proof placed on record that the plaintiff has got registered his Trade Mark with the emblem "RATHAM" ujk; RUl;Lfs;. There is also no resemblance between the plaintiff's emblem and the defendant's emblem. The following differences are obviously seen in the two pictures, even to the naked eye :-
------------------------------------------------------------
In the Plaintiff's In the Defendant's
package / Emblem: Package / Emblem:
------------------------------------------------------------
1. The "Ratham" is having two There are No wheels
wheels and 2 cloth 'Kunjams' and no 'Kunjam'
of a cylindrical form hanging
on either side.
2. There is only one opening There are as many as
six openings.
3. There are No Letters There are the following
within the 'Ratham' letters "VCT-KUTIL-
(Chariot) CHEROOTS" in a Bold
form.
4. There are No other words The following words are
excepting "25 RUl;Lfs;" there in a bold form:-
maximum Prince Rs.6-50. "ufk; 1 Foy; RUl;Lfs;"
and also there is a Trade
Mark.
5. The address of the plaintiff The address of the
is clearly given as defendants are clearly
'Mayil Traders' given as 'Kudil
Traders'
6. On the backside of the On the backside of the
package, there are No package, the emblem is
other words excepting printed in two colours,
the 'Ratham' figure. Yellow, Violet & four such emblems are printed in between the word "Foy; RUl;Lfs; " & Kudil Traders is boldly mentioned.
7. The size is about 2" to 2 = "The size is 4"in Width &
in Width and about 4" in 4"in Height.
Height.
8. The 'Ratham' is in Dark violet The'Kudil'(Hut)is printed
Colour, the words (Ratham) in light violet, Blue and
" ujk; RUl;Lfs; " is in Dark White and only the other
Red, the address of the colour is used as Yellow.
plaintiff is in Blue and
the Registered Trade mark
Number is mentioned
in Yellow colour.
9. The package is printed The Package with emblem
in four colours. is printed only in three
colours.
------------------------------------------------------------
11. As a matter of fact while the plaintiff is trading in the name of "Mayil Traders" and the said name is also printed on the sides of the plaintiff's package with a bold picture of a 'Peacock', there is no such bold emblem on the defendant's package. The defendant's package only contains the address of the 'Kudil Traders'.
12. The plaintiff goods are totally different from the defendant's goods. The defendant has sent an application to register his Trade Mark "Kudil Cheroots" with the label under application No.634110. The said application has been filed long ago and it is pending consideration before the Registrar of Trade Marks.
13. An application was also filed by the defendant through his Attorney at Madras to search and find out whether there is any Registered Trade Mark similar to the defendant's proposed label. The Registrar of Trade Mark, Bombay had sent a letter to the defendant's attorney stating that there was no registered Trade Mark similar to the Trade Mark applied for by this defendant with the label. Under these circumstances, the Registrar of Trade Mark had impliedly held that there is absolutely no similarity between the plaintiff's label and Trade Mark and the defendant's label and Trade Mark, as the plaintiff's Trade Mark is admittedly registered long before this defendant's application for the Registration of his Trade Mark.
14. The defendant has been manufacturing and selling Cigars under the name 'Kudil Cheroots' " ufk; 1 " and his label has acquired a wide repute. He is doing considerable business for the last 5 years under his label in the Districts of Salem, Coimbatore, Kollegal in Karnataka, Dharmapuri District, Tiruppur and Kerala. The defendant's label contains the translation in 'Malayalam' as well as 'Kannada'. No such thing occurs in the plaintiff's label.
15. There is a wrapper around the cigar in both the plaintiff's bundle as well as in defendant's bundle. The colours used by the plaintiff in the ring around the cigar are yellow, light green, blue and in some cases, yellow light violet and white. In the Ring to the cigar used by the defendant to wrap around the cigar, he uses only the colours of light violet and Yellow. Nobody can miss these colours and nobody can be deceived.
16. The word " ufk; " used in the defendant's label only means 'quality'. The ' ufk; 1 ' means ' first quality'. It has nothing to do with the word 'Ratham' used by the plaintiff. 'Ratham' means a 'Chariot'. It is impossible to confuse the chariot with the adjective 'quality'. The defendant is printing only a 'Kudil' in his label. A 'Kudil' is a hut with openings. This cannot be confused with a crariot which is in complete without wheels. The plaintiff's device is not identical with the defendant's device. The get-up of the wrapper is totally different in both the cases.
17. There is no motive whatsoever for this defendant to imitate from the plaintiff's label. This defendant has been doing the business from 1989 onwards and has established a market for himself. The plaintiff having secured a trade mark in 1982 or 1986 never took any action against this defendant from 1989 and has come forward with this suit only after his workmen deserted him and joined this defendant. Hence, the claim of the plaintiff that he had suffered with damages on account of the defendant's action to the tune of Rs.5,000/- cannot be admitted.
18. The plaintiff has not produced the partnership deed to show that one Padmanabhan is the managing partner of Mayil Traders. This defendant understands that Padmanabhan is no more and unless the partnership deed is produced, it cannot be heard to say that the plaintiff's firm is still in existence.
19. Based on the pleadings of the parties to the suit, the Trial Court has formulated as nearly as four issues which are detailed as under;
1. Whether the defendant is copying the Trade Mark of the plaintiff ' Ratham' using the word 'Ragam' to appear similar to the Trade Mark of the Plaintiff?
2. Whether the plaintiff is entitled to destroy the impeaching labels, wrappers, ring labels and marks used by the defendant?
3. Whether the plaintiff is entitled to get the cost of Rs.5000/- from the defendant?
4. To what relief the plaintiff is entitled?
20. In order to substantiate their respective cases one Varadharajan who is the husband of Vedhambal was examined as PW1. During the course of his examination Exs.A1 to A12 were marked. On the other hand, the defendant had examined himself as DW1 and during the course of his examination Exs.B1 to B4 were marked.
21. On appraising the evidences both oral and documentary and on considering the related facts and circumstances the learned District & Sessions Judge, (FTC 1) Salem has found that the plaintiff had not produced any acceptable legal evidences, and ultimately has dismissed the suit on the following grounds :-
1. There is no similarity between the plaintiff's wrapper and that of the Defendant causing confusion in the minds of the buyers.
2. The Mayil Traders is a partnership firm and that the name of the partners have not been disclosed.
3. The plaint has been signed by Vedambal alone and hence the suit is not maintainable.
4. The Defendant has come to know that one of the partners Padmanabhan had passed away and hence the partnership has come to an end.
5. One of the partners Vedambal who has signed and verified the plaint has not entered the witness box and only her husband alone has entered and given evidence.
6. The Certificate issued by the Trade Marks Registry to the Plaintiff is for a period of 7 years only and is not for use in legal proceedings. Further the validity of the certificate expired before the institution of the suit on 29.11.1994 and hence the plaintiff cannot maintain the suit under the Trade Marks Act.
22. Being aggrieved by the judgment and decree of the trial Court, the plaintiff stands before this Court with this appeal.
23. Pending disposal of the appeal, the plaintiff has filed a Civil Miscellaneous petition in CMP No.8 of 2011 under Order 41 Rule 27 of C.P.C to receive the certificate dated 14.12.2010 issued by the Deputy Registrar of Trade Marks, Chennai as an additional evidence, on the side of the plaintiff. In the affidavit filed in support of the petition, the petitioner has stated that in order to establish their case, the plaintiff had filed documents to prove the registration of their trademark before the trial Court. The Registration of trademark was renewed periodically, however, the trial Court has held that the certificate issued itself would reveal that this certificate is not for use in legal proceedings and on the date of filing of the suit the period was expired by 08.02.1989.
24. Exs.B-2 and B-3 were filed to show the registration of the Trade mark and the subsequent registration certificates were not filed. In view of the finding of the Trial Court that the validity period was expired, it is imperative on the part of the plaintiff to prove that the trademark is in force till date, and therefore, the plaintiff had applied to the Deputy Registrar of Trade Marks, Chennai for issuance of certified copy of the certificates of renewal. In compliance with the request of the plaintiff the Deputy Registrar of Trade Marks has also issued certificate of registration for use in legal proceedings and that the certificate issued by the Deputy Registrar of Trade Mark clearly indicates that the registration was renewed for a period of 7 years from 7th December, 1989, again from 9th December, 1996 and further from 9th February, 2003 for a period of 7 years.
25. In this connection, the learned counsel for the plaintiff would submit that the license was last renewed for a period of 10 years from 09.02.2010 and that it was clearly established that the Registered Trade Mark was in force right from 1982, including on the date of suit. The learned counsel for the petitioner would further submit that the certificate dated 14.12.2010, which was issued by the Deputy Registrar of Trade Mark was absolutely necessary for proving the contention of the plaintiff that the respondent had infringed the plaintiff Trademark. The learned counsel has also contended that the certificate dated 14.12.2010 issued by the Deputy Registrar of Trademark was not filed earlier as the plaintiff had thought that the first certificate was sufficient to adjudicate the dispute between the parties concerned. He has also adverted to that the document which was now sought to be produced was very much essential and unless the aforesaid document was received as an additional documentary evidence, the plaintiff would be put into irreparable loss and hardship.
26. On the other hand, the learned counsel for the respondent /defendant has contended that the petitioner/appellant had not given any reason for not renewing the certificate within the stipulated period and therefore there was absolutely no explanation given as contemplated under Order 41 Rule 27 to permit the appellant to file the documents. He has added further that the appellant having suffered a decree of dismissal was not entitled to cover up the latches by producing the certificate at the belated stage. He has also maintained that the averments in the application were casual in nature and that the appellant could not be allowed to substantiate his case in the appeal by producing a document which was after the date of filing of the suit. He would further submit that the very fact that the certificate issued under the Act could not be relied on in a legal proceedings which would go to show that the said document would have no evidentiary value and on that ground also it was liable to be rejected. He has also adverted to that PW1 was cross examined in July 2003 and after his cross examination, he was again recalled and several documents were marked and in such view of the matter, the petitioner / plaintiff ought to have filed the certificate, which was sought to be produced, at the time of trial after giving an opportunity to the respondent to cross examine on the said document. Exs.B2 and B3 were filed to speak about the fact that when the respondent applied for registration of his trademark, there was no existing trademark issued by the authority. Even in the certificate, which is now sought to be produced, it is clearly stated that the registration of this trademark shall give no right to the exclusive use of expression L-4 No. 1 / 77 and L2 No.4 / 75 and therefore the petitioner / appellant cannot rely on the said documents; the learned counsel for the respondent argued.
27. This Court has carefully considered the submission made on behalf of both sides.
28. It is apparent that the trial Court while dismissing the suit has held that the certificate issued itself would go to show that it was not for use in legal proceedings and on the date of filing of the suit the period had expired by 08.02.1989. This view was taken by the trial Court on the basis of Exs. B2 and B3 which were filed on behalf of the respondent / defendant.
29. It is significant to note here that the learned counsel for the petitioner / plaintiff has fairly admitted that on the basis of the findings of the trial Court and in order to prove that the trademark was in force till date of filing of the suit, the plaintiff had applied to the Deputy Registrar of Trademark, Chennai for issuance of a certificate for renewal and in pursuant to their request the Deputy Registrar of trademark had also issued a certificate of registration, which is now sought to be produced as an additional documentary evidence. A perusal of the document i.e certificate issued by the Deputy Registrar of trademarks reveals the history data as follows:
" R. Padmanabhan, Vedhambal, Kamaraj and Sumathi trading as Mayil Traders, Pudupalayam Post, Rasipuram Taluk, Salem District, Tamil Nadu. It is also revealed that the registration was periodically renewed for a period of 7 years from 21st April, 1986, again for a period of 7 years from 21st April, 1993, and for a further period of 7 years from 21st April, 2000 and advertised in journal No. 1227. Registration was also renewed for an another period of 10 years from 21st April, 2007 and advertised in journal No. 1371.
30. From the above certification it can be understood that the plaintiff's registered trademark has been in force right from 1982 till date including the date of suit and it is also understood that the registered trademark will be valid up to 21.04.2017. In this connection, the learned counsel for the petitioner / plaintiff would submit that Section 137(1) of the Trade Marks Act, 1999 contemplated that a copy of any entry in the Register or of any document referred to in sub-section (1) of Section 148 purporting to be certified by the Registrar and sealed with the Seal of Trade Marks Registry should be admitted in evidence in all Courts and in all proceedings without further proof or production of the original. He would further submit that in the interest of justice and to take fair decision in this case, it was very much essential to receive the document which was sought to be produced.
31. In support of his contention, he has placed reliance upon the decision in Hasan Abubucker Vs. Kottikulam St., Mohideen Pallivasal Therkku Mohindeen Pallivasal 2000(III)CTC 193. In this case, K.P.Sivasubramaniam.J. has held that the ultimate aim of a judicial proceeding is to render justice and technicalities including under Order 41, Rule 27 CPC are only hand maids of justice and it is not possible for the judicial mind to shut out or close its eyes when an important piece of evidence is brought to its notice."
32. On coming to the instant case on hand, it is pertinent to note here that the certificate dated 14.12.2010 issued by the Deputy Registrar of Trademark, Chennai is important piece of documentary evidence to establish the case of the petitioner / plaintiff. It is obvious to note here that this document is of recent origin and takes genisis for the first time to be introduced in the suit. It is established that the period of registration was expired by 08.02.1989. The petitioner has fairly admitted that based on the findings of the trial Court, he had applied to the Deputy Registrar of Trademark, Chennai for the issuance of certified copy of the certificate of renewal and only on the basis of his request the certificate dated 14.12.2010 came to be issued by the Deputy Registrar of Trademark, Chennai and as such it cannot be construed that it is going to introduce a new set of facts in this case, instead, it is going to establish the fact that the date of registration of plaintiff's trademark is 21.04.1979 and it is valid upto 21.04.2017 and that the registration was renewed for a period of 7 years from 21st April 1986, again for a period of 7 years from 21st April, 1993 and further for a period of 7 years from 21st April 2010 and lastly for a period of 10 years from 21st April 2007 which will be valid upto 21.04.2017.
33. It may also be relevant to note here that under Order XLI, CPC, the appellate Court is a Court of appeal in facts also. It has the power of jurisdiction to reappraise the evidence and come to its own conclusion on basis of materials. It is obvious that clauses (a), (aa) and (b) of sub-rule (1) of Rule 27 of Order XLI refer to three different situations. Power of the appellate Court to pass any order thereunder is limited. For exercising its jurisdiction thereunder, the appellate Court must arrive at a finding that one or the other conditions enumerated thereunder is satisfied. A good reason must also be shown as to why the evidence was not produced in the trial Court.
34. As adumbrated supra, the document, which is sought to be produced may be new, but at the same time, it is to be seen that it is not going to introduce a new case. The appellant/ plaintiff has also given a satisfactory account about what necessitated him to apply for the certified copy of the document, which is sought to be produced in this appeal. Therefore, this Court is of the considered view that the appellant / plaintiff has emphatically supplied adequate reason for the production of this document at the appeal stage. As discussed infra, this Court, being the appellate court, has convinced that the conditions enumerated under the clauses of Order XLI Rule 27 have been complied with and hence there may not be any impediment in allowing this petition and to receive the document which is sought to be produced as an additional documentary evidence on the part of the appellant / plaintiff.
35. Having regard to the observation made above and in the interest of justice, this Court is of the view that the certificate dated 14.12.2010 issued by the Deputy Registrar of Trademarks, Chennai, which is sought to be produced as an Additional documentary evidence on the side of the plaintiff can be received. Accordingly, the Civil Miscellaneous petition in CMP 8 of 2011 is allowed and the certificate dated 14.12.2010 is received and marked as Ex.A13 on the side of the plaintiff.
36. On coming to the appeal, as per the averments of plaint, the plaintiff's firm has been registered under the Indian Partnership Act and doing business in high quality cigars in the name of "Ratham". According to the plaintiff, the said trademark has been registered with the Registrar of Trade Marks under Trade Mark No.348427 in class 34, and that the said trademark has been periodically renewed and will be in force till 21.04.2017. It is also the case of the plaintiff that the cigars of the plaintiff are of high quality and have earned good name and reputation in the market for several decades and the volume of business has been increasing from year to year.
37. Admittedly, the defendant is manufacturing cigar under the name of "RAGAM" "ufk; ". According to the plaintiff, it is similar to the device "RATHAM" of the plaintiff. In this connection, it was contended that while the plaintiff has printed the word Mayil "kapy;" in the wrapper, the defendant has printed the word "Kudil" "Foy; ", but all other letters and picture are slavish imitation of the plaintiff's wrapper. It is also the case of the plaintiff that an unwary purchaser cannot distinguish between the two wrappers and the Defendant's cigars can be easily mistaken for the plaintiff's cigars.
38. The learned Senior Counsel Mr. K.Chandramouli appearing for the plaintiff while advancing his argument has submitted that in an action for the infringement of trademark the only ingredient required to be proved is "whether the goods of the defendant are deceptively similar so as to pass off his goods as that of the plaintiff". He has also maintained that a minute comparison of the various features of the two labels are uncalled for in an action for infringement of trademark though it may be necessary in an action for passing off the goods, when the plaintiff's trademark is not registered. In support of his contention the learned counsel for the plaintiff has placed reliance upon the decision in Sun Pharmaceutical Industries Limited Vs. Cadila Healthcare Ltd., and another reported in 2010-2-L.W.12. In this case while penning down the judgment on behalf of the Division Bench, Prabha Sridevan,J has made reference to the decision of the Apex Court in Amritdhara Pharmacy Vs. Satya Deo Gupta, AIR 1963 S.C.449. In this case, it is held that "where the similarity between the plaintiff's and the defendant's mark is so close either visually, Phonetically or otherwise and the court reaches the conclusion that there is a limitation, no further evidence is required to establish that the plaintiff's rights have been violated".
39. The learned judge has also made reference to another decision in Ciba gaigy Limited Vs. Cross line Labouratory reported in 1995 PTC 251. In this case it is held that "the true test is whether the totality of the proposed trade mark is such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to existing trademark. Where both the words are invented and both contained descriptive element, one cannot disregard such element of the words which are descriptive and compare only with the remaining parts of the words. The question of likelihood of confusion has to be decided by comparison of the mark as a whole."
40. In WITCO (India) PVT. LTD. Vs. NITCO rep. by its Partners & others, reported in 2010 (1) L.W.82 (D.B) the suit was laid for infringement of the plaintiff's trademark "WITCO" by the defendant's trade mark "NITCO" and in these circumstances a Division Bench of this Court has observed that the similarity is such that from a distance even an educated customer may be deceived into mistaking one for other. At paragraph 23, the Division Bench has made reference to the decision reported in Durga Dutt Sharma Vs. Navaratna Pharmaceuticals Laboratories AIR 1965 SC 975 = (1965) 1 SCR 737. In this case, the legal position with respect to an action for infringement as well as passing off was considered in detail by the Hon'ble Supreme Court of India. At paragraph 28 , it is held as follows:-
"28. . . . . . . While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement. The action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods" (Vide Section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
41. The learned Senior Counsel Mr. K.Chandramouli appearing for the plaintiff has also adverted to that the plaintiff had established his case that the defendant had adopted the label of the plaintiff in a deceptive manner by adducing acceptable oral and documentary evidences, and that the trademark "RATHAM" of the plaintiff had been deceptively used by the defendant in his trademark " RAGAM". He has also contended that the defendant's trademark was likely to deceive of the plaintiff's visually, phonetically and on account of the conduct of the defendant the volume of sale of the plaintiff had considerably been decreased. He has also added that since the plaintiff had established that his rights had been violated and infringed the relief claimed by the plaintiff ought to have been granted by the trial Court, but it had miserably come to a wrong conclusion which resulted in the dismissal of the suit.
42. In support of his contention he has also placed reliance upon the decision in Sri Pattatharasiamman Textiles Vs. A.Lakshmanan reported in 2009 4 -L.W.833. In this case, the suit was laid by the Appellant for the grant of permanent injunction restraining the defendant his men, agents, dealers , stockists, assigners and others claiming under the respondent / defendant from using or attempting to use or enabling others to use the word NAYA JET, the device of the Aeroplane or in combination thereof, and/or in any other Trade mark identical or deceptively similar or in any other manner infringing the appellant / plaintiff's Trade mark registered in Regn.No.467004 in Clause 24 in respect of Textile cloth including lungies and for the relief of permanent injunction restraining the respondent /defendant, his agents, dealers, stockists and claiming others thereunder from passing off, or attempting to pass off or from enabling others to pass off the defendant goods and for an issuance of a direction to the respondent /defendant to produce before the Court all his accounts of sales and profits for determining the ultimate compensation payable by the respondent /defendant to the appellant / plaintiff as damages etc. The trial Court on an appreciation of oral and documentary evidence has concluded that the appellant / plaintiff is not entitled to claim the reliefs prayed for and resultantly, dismissed the suit without costs.
43. Challenging the judgment and decree, the appellant has preferred an appeal before this Court. The learned Single Judge of this Court while writing judgment has made reference to the decision of the Apex Court in Parle Products (P) Limited Vs. J.P. and Company, Mysore reported in AIR 1972 SC 1359 = (1973) 86 L.W.28 S.N. wherein it is observed as follows:
" To decide the question as to whether the plaintiffs right to a trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as and for those of the plaintiff. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it.
44. The learned Senior Counsel Mr. K.Chandramouli has also added that the judgment of the trial Court was vitiated by comparing each and every feature in the two labels for coming to the conclusion that there were large differences in the two labels and hence could not cause confusion. He has also submitted that the approach of the trial Court was absolutely wrong and the trial Court had not approached the real issue with proper perspective. He has also contended that mere look of the plaintiff's label with that of the Defendant would reveal that the two marks were so deceptively similar as to cause confusion in buying the Defendant's cigar as that of the plaintiff. He has also maintained that the case of the defendant was that he had applied for registration of Kudil Cheroots and that he was informed that the said mark had not been registered was of no consequence and it was for the Court to decide as to whether there was infringement or not. He has also adverted to that the defendant was marketing his cigars under the brand of RAGAM cigars, deceptively adopting brand similar to that of the plaintiff whose cigars are of high quality. While advancing his argument, he has also drawn the attention of this Court to the Exs. A7 to A11 and submitted that as evident from Exs.A7 to A11 it could be easily understood that the plaintiff had filed income tax returns for the assessment years 1995 1996 to 1999 2000, which would go to show the huge business turn over of the plaintiff's firm.
45. With regard to the observation of the trail Court that the names of the partners should be mentioned in the plaint, the learned counsel would submit that the conclusion was not warranted as contemplated under the proviso to Order XXX of code of Civil Procedure. Order XXX of code of Civil Procedure dealing with the suit by or against firms and persons carrying on business in names other than their own. Rule 1 (1) enacts as follows:
1. Suing of partners in name of firm.- (1) Any two or more persons claiming or being liable as partners and carrying on business in India may sue or be sued in the name of the firm (if any) of which such persons were partners at the time of the accruing of the cause of action, and any party to a suit may in such case apply to the Court for a statement of the names and addresses of the persons who were, at the time of the accruing of the cause of action, partners in such firm, to be furnished and verified in such manner as the Court may direct.
Sub Rule (2) enacts as follows:-
(2). Where persons sue or are sued as partners in the name of their firm under sub-rule (1), it shall, in the case of any pleading or other document required by or under this Code to be signed, verified or certified by the plaintiff or the defendant, suffice if such pleading or other document is signed, verified or certified by any one of such persons.
46. From the contents of Rule 1 (1) it is thus clear that any two or more persons claiming to be partners and carrying on business may sue or be sued in the name of the firm and any party to the suit may in such case apply to the Court for a statement of the names and addresses of the partners.
47. Sub Rule (2) provides that where persons sue or are sued in the name of the firm it will be sufficient if such pleading or other document is signed, verified or certified by any one of such persons.
48. Rule 2 provides that where a suit is instituted by partners in the name of the firm, the plaintiff or their pleader shall, on demand in writing by or on behalf of any Defendant, forthwith declare in writing the names and places of residence of all the persons constituting the firm on whose behalf the suit is instituted.
49. In this regard, the learned counsel for the plaintiff has maintained that the plaint could very well be signed by any one of the partners and it need not disclose the names of all the partners and that it was open to the Defendant if he so desired to call for names of all persons who constitute partnership. Under these circumstances, he would submit that the suit which was instituted by the plaintiff's firm represented by Vedhambal one of the partners was maintainable and was not suffered from any defect. He has also contended that the mere allegation of the Defendant that the suit was not maintainable, as one of the partners Padmanabhan had died was not sustainable in law.
50. Ex.A1 is the certificate issued by the Registrar of Firm with whom the partnership deed has been registered. Serial Number 6 discloses the names of the partners and the date of joining / ceasing. In Serial Number.1 the name of R. Padmanabhan has been mentioned. It is specified that he joined the firm on 01.04.1979 and on his death he ceased to be a partner with effect from 30.09.1993. In his place his two minor sons viz., Minor P.Satheeskumar and Minor P.Ashok Kumar have been included as partners with effect from 01.10.1993 immediately following the demise of their father. In this connection, the learned counsel for the plaintiff would contend that by the demise of Mr.R.Padmanabhan, the partnership had not come to an end as merely alleged by the Defendant and was a continuing one doing business under the name of Mayil Traders. In support of his contention, he has also placed reliance upon the decision in M/s.Hindustan Petroleum Corporation Ltd. Vs. M/s. Gem Paper Company and others reported in 2010 -5-L.W.912. In this case, this Court has held that as contemplated under Section 42 of Partnership Act 1932, the suit already instituted, can be continued even after the death of a partner.
51. On coming to the instant case on hand, admittedly Mr.Padmanabhan had passed away on 30.09.1993 and immediately after his demise, his two minor sons have joined as partners with effect from 01.10.1993 and therefore, it is thus clear that the partnership has not come to an end by the demise of R.Padmanabhan and it is also concluded that the suit already instituted can be continued even after the death of one of the partners.
52. It is pertinent to note here that the learned trial judge has found that the partner Vedhambal has not chosen to tender evidence, but the examination of her husband as PW1 is sufficient to infer that the suit is not legally acceptable. In this regard, the learned counsel for the appellant would submit that the learned trial Court had failed to note that in civil actions it was not necessary for the plaintiff to enter into witness box and that any person, who was conversant with the facts of the case could be permitted to adduce the evidence. He would further submit that the partnership business was commenced by Padmanabhan, the father of P.W.1 Varadarajan and he had been looking after the affairs of the business and that he was competent to depose on behalf of his wife, who was one of the partners of the firm. In support of his contention, the learned counsel has taken the assistance of Section 118 and 120 of the Indian Evidence Act and maintained that as contemplated under Section 118 and 120 of the Indian Evidence Act in all civil proceedings, the parties to the suit i.e., either the husband or the wife could be competent witness and therefore PW1 who is the husband of the partner Vedambal was a competent witness to speak on behalf of his wife.
53. Section 118 of Indian Evidence Act reads as follows:-
Sec. 118. Who may testify. - All persons shall be competent to testify unless the Court considers that they are prevented from understanding the question put to them, or from giving rational answers to those questions, by tender years, extreme old age, disease, whether of body or mind or any other cause of the same kind.
Explanation.- A lunatic is not incompetent to testify, unless he is prevented by his lunacy from understanding the questions put to him and giving rational answers to them.
Section 120 of Indian Evidence Act would be more appropriate to support the case of the plaintiff, which enacts as follows:
Section.120. Parties to civil suit, and their wives or hubands. Husband or wife of person under criminal trial. - In all civil proceedings the parties to the suit, and the husband or wife of any party to the suit, shall be competent witnesses. In criminal proceedings against any person the husband or wife of such person, respectively, shall be a competent witness.
54. From the language of Section 120, it is palpable that in all civil proceedings, either the husband or wife is competent to tender evidence. Therefore, the findings of the trial Court seems to be extraneous.
55. With regard to the findings of the Trial Court that the suit is not maintainable as the certificate of Registered Trade Mark clearly indicate that it is not for the use in legal proceedings and that it was expired on the date of suit, the learned counsel for the plaintiff would submit that the legal position was that, the original certificate issued by the Registrar could not be used in legal proceedings but only the certified copy issued by the Registrar alone could be used in Court proceedings.
56. On the other hand, the learned counsel for the defendant would submit that absolutely there was no resemblance between the emblems of the plaintiff and the defendant and that there were minute differences between the plaintiff's trademark "RATHAM" and the defendant's trademark "RAGAM". The learned counsel for the defendant has also drawn this Court's attention to the distinction made in between these two trademarks in the written statement and he would further submit that the term RAGAM denoted the quality and that in the plaintiff package the trademark 'RATHAM' was having two wheels and 2 cloth 'Kunjams' in cylinderical form hanging on either side where as on the defendant package there were no wheels and no 'Kunjam'. He would further submit that the plaintiff trademark 'RATHAM' was in Dark violet Colour, the words (Ratham) ' ujk; RUl;Lfs; ' was in Dark Red and the address of the plaintiff was in Blue and the Registered Trade Mark Number was mentioned in Yellow colour. On the other hand, the defendant package The 'Kudil' (Hut) was printed in light violet, Blue and White and only the other colour was used as Yellow. He would submit that the package of the plaintiff was printed in four colours. On the other hand, the package of the defendant with emblem was printed only in three colours. He would further submit that the plaintiff had not chosen to produce the partnership deed to establish the fact that the trade marks and copies were issued in the name of Mayil Traders which was stated to be a partnership firm. This portion of argument advanced by the learned counsel for the defendant is not able to be countenanced.
57. There is no necessity to produce the partnership deed and the suit which is already instituted can be continued even after the death of a partner as decided in 2010 -5-L.W.912. It is to be reiterated that it is open to the defendant, if he is so desirous, to call for names of all persons who constituted partnership and hence this suit which instituted by the plaintiff is very well maintainable and it does not suffer from any defect as contemplated under Order 30 of CPC.
58. Further, the learned counsel for the defendant would submit that the defendant's trademark was a registered one and the Registration was effected subsequent to the registration of the plaintiff and therefore, the allegation that the Tamil words RATHAM and RAGAM were deceptively similar was not sustainable and that the other allegation of the plaintiff that the get up of the label was exactly similar to the label of the plaintiff was also not legally admissible. He would further submit that the word RAGAM used in the defendant label only means quality and that the term RAGAM I suggested the meaning of first quality and it had nothing to do with the word RATHAM used by the plaintiff. He has also submitted that RATHAM means Chariot and it was impossible to confuse the chariot with the adjective "quality". He would further submit that the defendant had been running his business in manufacturing and selling Cigars under the name and style 'Kudil Cheroots' 'ufk; 1 ' and his label had acquired a wide reputation. He has also maintained that the defendant was doing considerable business for the last 5 years under his label in the Districts of Salem, Coimbatore, Kollegal in Karnataka, Dharmapuri District, Tiruppur and Kerala and the defendant had demarcated his business area and he never intended to imitate the understood trademark of the plaintiff and to infringe their emblem. He has; also drawn the attention of this Court to paragraph 10 of the trail Court judgment and submitted that Exs.A7 to A11 would go to establish the fact that all the allegations of the plaintiff with regard to the annual turn over were false and that the defendant never committed loss to the business of the plaintiff. In support of his contention, he has relied upon the decision in Hindustan Pencils Ltd., Vs. Puma Stationery Ltd., 2005 (31) PTC 541 (Del.). This Court has carefully gone through the above cited decision and is of considered view that the facts and circumstances narrated there are entirely different from that of the present case on hand. This Court has also carefully gone through the evidences both oral and documentary and considered the submissions made on behalf of both sides. From the materials available on record it is established that the plaintiff has been carrying on business in the name of "RATHAM", the said trade mark has been registered with the Registrar of trademark under trade mark No.348427 (clause 34) as revealed under Ex.A13 (Additional Documentary Evidence), which is marked in pursuant to the order of this Court dated 19.05.2011 in M.P. No: 8 of 2011 that the said trademark has been periodically renewed and will be in force till 21.04.2017. It is also revealed from the materials that the defendant started manufacturing cigars under the trade mark "RAGAM". It also appears that the plaintiff has printed the word Mayil in their wrapper and the defendant has printed the word "KUDIL" in their wrapper. As rightly contended by the learned counsel for the plaintiff the rustic villagers and customers cannot easily distinguish the words "RATHAM" and "RAGAM". It is also pertinent to note here that on a glimpse at the labels of the plaintiff and the defendant one can easily infer that the Tamil words "RATHAM" and "RAGAM" are deceptively similar and even by a minute look, it cannot be easily differentiated as the get up type of the labels are so similar. Further, it is also established that the registration of the trademark of the plaintiff took place much earlier to the defendant. As rightly held by the Supreme Court of India in Amritdhara Pharmacy Vs. Cadila Pharmaceuticals Ltd., A.I.R. 1963 S.C.449, where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights have been violated. On coming to the instant case on hand, the plaintiff and the defendant trademarks are so close visually as well as phonetically and therefore definitely, it may be confuse the customers and equally it would also affect the market of the plaintiff.
59. It is important to note here that the defendant, while he was in the witness box, has deposed that he was not doing the business and after the filing the suit, he had stopped doing the business. He has also admitted that he had not registered with the sales tax authorities and he was not having income tax account and that he had no record to show that 10 persons were working under him. It is also relevant to note here that DW1, the defendant, has admitted in his evidence that in his label he had printed the word "RAGAM" on both side to KUDIL and plaintiff had also printed the word "RATHAM" on both sides on the ring label. The defendant and the plaintiff have printed their labels in the same patent, in model and same colour. The candid admission of the defendant would establish the fact that slavish imitation of the plaintiff label by the defendant and the wrappers are deceptively similar. On a careful scrutiny of the evidence, both the oral and documentary, this Court is of considered view that the trail Court has not properly appreciated the evidence adduced on behalf of both sides. The learned trial judge has failed to notice that the use by the defendant of the mark 'RAGAM' is an infringement of the plaintiff's mark 'RATHAM' as the adoption of a leading characteristic of the plaintiff's trade mark may constitute an infringement, notwithstanding that each mark contains other matter which distinguishes one from other. The balance of convenience is also inform of the plaintiff and as such there being infringment of the trade mark the plaintiff is entitled the relief claimed for. Under these circumstances, the judgement and decree of the trial Court dated 26.08.2003 and made in O.S.No. 207 of 1994 are liable to be set aside.
60. In the result C.M.P.No.8 of 2011:
Petition is allowed and the certificate dated 14.12.2010 is received and marked as Ex.A13 on the side of the plaintiff.
A.S.No. 769 OF 2004:
Appeal is allowed and the suit in O.S.No. 207 of 1994 is decreed in respect of the Reliefs (a) and (b). The defendant is directed to deliver the offensive infringing ring labels, wrappers and marks to the plaintiff for destruction, within ten days from the date of this judgment. The suit in respect of the Relief (c) is dismissed as there is no clear calculation of damages. There is no order as to costs.
19.05.2011
Index : Yes / No
Internet : Yes / No
sms
T.MATHIVANAN.J
sms
To
The Additional District and Sessions Judge,
Salem.
A.S No.769 of 2004
Dated 19.05.2011