Madras High Court
Mr.A.D.Padmasingh Isaac vs Page Nos.1/ on 15 September, 2022
Author: M.Sundar
Bench: M.Sundar
C.S(Comm. Div.)No.180 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 15.09.2022
CORAM
THE HON'BLE MR.JUSTICE M.SUNDAR
C.S(Comm. Div.)No.180 of 2022
and
O.A.Nos.545 to 547 of 2022
and
A.No.3763 of 2022
1. Mr.A.D.Padmasingh Isaac
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.Flora Foods
A Partnership Firm
No.1926, 34th Street, I Block
Ishwarya Colony, Anna Nagar West
Chennai-600 040
Represented by its Partner
Mrs.Thelma Isaac .. Plaintiffs
Vs.
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C.S(Comm. Div.)No.180 of 2022
1. Aachi Kulambu Kadai & Fast Food
No.6, Sheriff Colony Main Road
Sheriff Colony Extension
Aranmanai Pudur, Tiruppur - 641 604
Tamil Nadu.
2. Zomato Limited
Having Registered Office at
Ground Floor 12A, 94
Meghdoot, Nehru Place
New Delhi - 110 019
Also having office at
2/41, Resolute Towers
2nd Lane, MC Nicholas Road
Chennai-600 031.
3. Swiggy India
Having its Head office at
Sarjapur Main Road
Koramangala, 1st Block
Near Sony World Signal & GKP Optical
Bangalore - 560 034, Karnataka
Also having its office at
3rd Floor, Temple Tower
Anna Salai, CIT Nagar West
Nandanam, Chennai-600 035.
4. Meta Platforms INC
1601-Willow Road
Menlo Park, California 94025
United States.
5. Domains By Porxy, LLc
2150, E Warner Road
Tempe, Arizona 85284
United States. .. Defendants
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C.S(Comm. Div.)No.180 of 2022
This Civil Suit is preferred, under Order IV Rule 1 of the Original
Side Rules 1994 read with Order VII Rule 1 of CPC and Sections 27(2),
29, 134 and 135 of the Trade Marks Act, 1999 to
(a) Granting a permanent injunction, restraining the 1st defendant,
by himself, his servants, agents, distributors, or anyone claiming through
him from manufacturing, selling, advertising and offering for sale or
providing services using the name 'AACHI KULAMBU KADAI &
FAST FOOD' or any other similar Trademark name or similar sounding
expression in any media, websites, online trade, mobile applications 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 trademark / 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, websites, online trade, mobile applications and
internet advertising 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 plaintiffs' registered trademark
Nos.838786, 1116254, 1479159, 1715718 & 2965624 or in any manner
infringing the 1st plaintiff's registered trademarks referred herein;
b) granting a permanent injunction restraining the 1st 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, websites, online trade, mobile applications,
internet advertisements the mark/name 'AACHI KULAMBU KADAI &
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C.S(Comm. Div.)No.180 of 2022
FAST FOOD' in relation to the restaurant or with respect to or any other
food preparation or on any other business the impugned trademark/name
which is in any manner deceptively or phonetically confusingly similar to
the plaintiffs trademark / name AACHI / AACHI CHETTINAD
RESTAURANT / AACHI KITCHEN / AACHI NAMMA KITCHEN or
in any other manner pass off their hotel, business or goods as and for that
of the plaintiffs;
c) mandatory injunction to the defendant Nos.2 to 5 by themselves,
their agents, distributors or anyone claiming through them to remove or
take down the name 'AACHI KULAMBU KADAI & FAST FOOD' of
the 1st defendant from the business listings in the online databases, web
and mobile applications of the defendant Nos. 2 to 5 in relation to the
restaurant services or with respect to any other food preparation or on
any other similar business or providing information, menus and user
reviews pertaining to such restaurant services or with respect to any other
food preparation or on any other similar business in any manner so as to
cause confusion to the public with respect to the plaintiffs
trademark/name AACHI / AACHI CHETTINAD RESTAURANT /
AACHI KITCHEN / AACHI NAMMA KITCHEN;
d) Directing the defendants 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 KULAMBU KADAI & FAST FOOD' or other
identical trademark used in the pouches and packets bearings the word
AACHI / AACHI CHETINAD RESTAURANT / AACHI KITCHEN /
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C.S(Comm. Div.)No.180 of 2022
AACHI NAMMA KITCHEN;
e) Directing the defendants to render an account of profits made by
them by the use of the impugned trademark 'AACHI KULAMBU
KADAI & FAST FOOD' on the service referred and decree the suit for
the profits found to have been made by the defendant, after the defendant
has rendered accounts;
f) directing the defendants to pay to the plaintiffs the costs to the
suit;
For Plaintiffs : Ms.Gladys Daniel
along with Ms.J.Vennila
and Ms.T.Hemalatha
For D4 : Mr.Sathish Parasaran, Senior Counsel
for Mr.Allwin Godwin
Ms.Akila J
JUDGMENT
When the matter was taken up for hearing, Ms.Gladys Daniel, learned counsel for plaintiffs and Mr.Satish Parasaran, learned Senior counsel instructed by Mr.Allwin Godwin, counsel on record for fourth defendant are before this Court.
2. From hereon and henceforth, the parties will be referred to by their respective ranks in the main suit. Page Nos.5/11 https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022
3. Adverting to earlier proceedings made by Hon'ble predecessor Judge on 01.09.2022, learned counsel for plaintiffs submits that steps have since been taken and defendants (other than 4th defendant) are yet to be served.
4. Be that as it may, a perusal of case file makes it clear that plaint in the captioned suit has been presented in this Court on 24.08.2022. A further perusal of the case file also brought to light that neither cease and desist notice nor any other communication has been sent to the defendants more particularly, first defendant prior to presentation of plaint on 24.08.2022.
5. This takes this Court to Section 12-A of 'The Commercial Courts Act, 2015 (4 of 2016)' [hereinafter 'said Act' for the sake of convenience and clarity] which reads as follows:
'12-A. Pre-Institution Mediation and Settlement. - (1) A suit, which does not contemplate any urgent interim relief under this Act, shall not be instituted unless the plaintiff exhausts the remedy of pre-institution mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government.Page Nos.6/11
https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022 (2) The Central Government may, by notification, authorise the Authorities constituted under the Legal Services Authorities Act, 1987 (39 of 1987), for the purpose of pre-institution mediation.
(3) Notwithstanding anything contained in the Legal Services Authorities Act, 1987 (39 of 1987), the Authority authorised by the Central Government under sub-section (2) shall complete the process of mediation within a period of three months from the date of application made by the plaintiff under sub-
section (1):
Provided that the period of mediation may be extended for a further period of two months with the consent of the parties :
Provided further that, the period during which the parties remained occupied with the pre-institution mediation, such period shall not be computed for the purpose of limitation under the Limitation Act, 1963 (36 of 1963).
(4) If the parties to the commercial dispute arrive at a settlement, the same shall be reduced into writing and shall be signed by the parties to the dispute and the mediator.
(5) The settlement arrived at under this Section shall have the same status and effect as if it is an arbitral award on agreed terms under sub-section (4) of Section 30 of the Arbitration and Conciliation Act, 1996 (26 of 1996).'
6. Pre-suit mediation under Section 12-A of said Act had thrown up a conundrum of sorts as different High Courts had taken different Page Nos.7/11 https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022 views i.e., while some of the High Courts have taken the view that Section 12-A of said Act is mandatory, some High Courts have taken the view that it is directory i.e., optional. If it is mandatory, the result is rejection of plaint and the parties have to resort to Section 12-A of said Act prior to presentation of the plaint. The matter ultimately traveled to Hon'ble Supreme Court from Chandigarh i.e., from a matter decided by Hon'ble Punjab and Haryana High Court vide Patil Automation case law [Patil Automation Private Limited and Others vs. Rakheja Engineers Private Limited reported in 2022 SCC OnLine SC 1028].
7. In Patil Automation case law, Hon'ble Supreme Court had made it clear that Section 12-A of said Act is mandatory, prospective and the reckoning date is 20.08.2022. In the case on hand, as already alluded to supra, the suit has been presented on 24.08.2022.
8. Faced with the above situation, learned counsel for plaintiffs made a request to withdraw the captioned suit but made a plea that all the rights and contentions of the plaintiffs may please be preserved for resorting to Section 12-A of said Act and thereafter come to this Court if Page Nos.8/11 https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022 the need persists (obviously, depending on the outcome of pre-suit mediation).
9. Learned counsel has made an endorsement in the case file and a scanned reproduction of the same is as follows:
10. In the light of the narrative thus far, captioned Suit is disposed of as closed / withdrawn albeit preserving all the rights and contentions of the plaintiffs (a) to resort to pre-suit mediation under Section 12-A of said Act and (b) to come to this Court on the same cause of action if the need persists (obviously, depending on the trajectory which pre-suit Page Nos.9/11 https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022 mediation takes). Consequently, applications are also disposed of as closed. There shall be no order as to costs.
15.09.2022 Index : Yes/No Speaking/Non-speaking order mk Page Nos.10/11 https://www.mhc.tn.gov.in/judis C.S(Comm. Div.)No.180 of 2022 M.SUNDAR, J.
mk C.S(Comm. Div.)No.180 of 2022 and O.A.Nos.545 to 547 of 2022 and A.No.3763 of 2022 15.09.2022 Page Nos.11/11 https://www.mhc.tn.gov.in/judis