Madras High Court
Dhanam Textiles vs Gowri Textiles on 4 November, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.516 of 2016
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 04.11.2019
CORAM
THE HONOURABLE MR. JUSTICE N.SATHISH KUMAR
C.S.NO.516 of 2016 and
O.A.No.623, 624 and 625 of 2016 and
A.No.5391, 5392 of 2019
Dhanam Textiles,
30, Coral Merchant Street,
Mannady, Chennai 600 001.
Represented by its partner
Mr.P.Babu ... Plaintiff
Vs.
1. Gowri Textiles,
Kaniamman Kovil Street,
Amaiyar Kuppam Post,
Palipattu Taluk 631 301,
Thiruvallur District.
2. M/s K.G.S.Lungi & Co.,
Mannady,
Chennai 600 001.
3. Maa Annapurna Transport Agency Ltd,
No.46/311, Thambu Chetty Street,
Parrys,
Chennai 600 001. ... Defendants
1/14
http://www.judis.nic.in
C.S.No.516 of 2016
PRAYER Civil Suit filed under Order IV Rule 1 of the Original Side
Rules read with Order VII Rule 1 of the Code of Civil Procedure read with
Sections 27, 28, 29, 134 and 135 of the Trade Marks Act, 1999 read with
Sections 51, 55 and 62 of the Copyright Act, 1957 to pass decree and
judgment for
i) a permanent injunction restraining the defendants by
themselves, their directors/partners/proprietor as the case may be, legal
representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers, retailers,
advertisers or any one claiming through or under them from infringing
plaintiff's registered trademarks 360 BRAND label and MUBARAK by
manufacturing, distributing, marketing, selling, offering for sale, advertising
or in any other manner dealing in lungies or any other product bearing the
almost identical trademark 060 BRAND label and trademark MUBARAK with
colour scheme, getup, layout which are almost identical to plaintiff's
registered trademarks in any manner whatsoever.
b) a permanent injunction restraining the defendants by
themselves, their directors/partners/proprietor as the case may be, their
legal representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers, retailers,
advertisers or any one claiming through or under them from committing acts
2/14
http://www.judis.nic.in
C.S.No.516 of 2016
of copyright infringement by making substantial reproduction of the
plaintiff's registered copyright in the aristic works 360 BRAND label and
THILLANA label and copyright in MUBARAK label by use of deceptively similar
colour scheme, get up and layout for their 060 BRAND label, RASAGULLA
label and MUBARAK label or in any manner whatsoever.
c) a permanent injunction restraining the defendants by
themselves, their directors/partners/proprietor as the case may be, their
legal representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers, retailers,
advertisers or any one claiming through or under them from in any manner
passing off and enabling others to pass off the defendants' lungies and other
textile goods as and for the plaintiff's lungies, and other textile goods by use
of the trademarks 060 BRAND label, RASAGULLA label and MUBARAK label or
any other mark deceptively similar to the plaintiff's trademarks 360 BRAND
label, THILLANA Label and MUBARAK label in any manner whatsoever.
d) the defendant be ordered to surrender to plaintiff for
destruction of all lungies, labels, dyes, blocks, moulds, screen prints, packing
materials and other materials bearing the identical/deceptively similar
trademarks 060 BRAND label, RASAGULLA label and MUBARAK label or any
trademark similar to plaintiff's trademarks 360 BRAND label, THILLANA label
and MUBARAK label.
3/14
http://www.judis.nic.in
C.S.No.516 of 2016
e) a preliminary decree be passed in favour of the plaintiff
directing the defendants to render account of profits made by use of
trademarks 060 BRAND label, RASAGULLA label and MUBARAK label and a
final decree be passed in favour of the plaintiff for the amount of profits
thus found to have been made by the defendants after the latter have
rendered accounts.
f) the defendants be ordered and decreed to pay to the plaintiff a
sum of Rs.1,00,000/- as damages for acts of infringement of trademark and
passing off committed by the defendants by manufacture and sale of lungies
bearing the trademarks 060 BRAND lable, RASGULLA label and MUBARAK
label and for costs.
For Plaintiff : Mr.Arun C. Mohan
For Defendants : D1 and D2 set exparte
D3 - given up.
JUDGEMENT
The suit has been filed for
i) a permanent injunction restraining the defendants by themselves, their directors/partners/proprietor as the case may be, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, 4/14 http://www.judis.nic.in C.S.No.516 of 2016 advertisers or any one claiming through or under them from infringing plaintiff's registered trademarks 360 BRAND label and MUBARAK by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in lungies or any other product bearing the almost identical trademark 060 BRAND label and trademark MUBARAK with colour scheme, getup, layout which are almost identical to plaintiff's registered trademarks in any manner whatsoever.
b) a permanent injunction restraining the defendants by themselves, their directors/partners/proprietor as the case may be, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them from committing acts of copyright infringement by making substantial reproduction of the plaintiff's registered copyright in the aristic works 360 BRAND label and THILLANA label and copyright in MUBARAK label by use of deceptively similar colour scheme, get up and layout for their 060 BRAND label, RASAGULLA label and MUBARAK label or in any manner whatsoever.
c) a permanent injunction restraining the defendants by themselves, their directors/partners/proprietor as the case may be, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, 5/14 http://www.judis.nic.in C.S.No.516 of 2016 advertisers or any one claiming through or under them from in any manner passing off and enabling others to pass off the defendants' lungies and other textile goods as and for the plaintiff's lungies, and other textile goods by use of the trademarks 060 BRAND label, RASAGULLA label and MUBARAK label or any other mark deceptively similar to the plaintiff's trademarks 360 BRAND label, THILLANA Label and MUBARAK label in any manner whatsoever.
d) the defendant be ordered to surrender to plaintiff for destruction of all lungies, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the identical/deceptively similar trademarks 060 BRAND label, RASAGULLA label and MUBARAK label or any trademark similar to plaintiff's trademarks 360 BRAND label, THILLANA label and MUBARAK label.
e) a preliminary decree be passed in favour of the plaintiff directing the defendants to render account of profits made by use of trademarks 060 BRAND label, RASAGULLA label and MUBARAK label and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendants after the latter have rendered accounts.
f) the defendants be ordered and decreed to pay to the plaintiff a sum of Rs.1,00,000/- as damages for acts of infringement of trademark and passing off committed by the defendants by manufacture and sale of lungies 6/14 http://www.judis.nic.in C.S.No.516 of 2016 bearing the trademarks 060 BRAND lable, RASGULLA label and MUBARAK label and for costs.
2. The case of the plaintiff in nutshell is as follows. The plaintiff is a leading manufacturer of textile goods such as lungies and various other textile products for the last several decades. The plaintiff has adopted the mark MUBARAK in the year 1995 and is the proprietor of the said trademark. The plaintiff has got registration certificate No.756328 for the trademark MUBARAK label and had obtained copyright also with distinctive colour scheme, getup, lay out and other aristic features.
2.2 The plaintiff has adopted another mark 360 BRAND in respect of lungies. The said mark is depicted on the lungies on a distinctive label along with THILLANA label right below it. The trademark 360 BRAND label has been registered in Certificate No.560045 and copyright also obtained for the same in certificate No. A-52010-92 in favour of the plaintiff. The plaintiff has gained reputation and goodwill in respect of the trademarks MUBARAK, 360 BRAND and THILLANA among the public. 7/14 http://www.judis.nic.in C.S.No.516 of 2016 2.3 The plaintiff is the owner of the copyright for the marks/labels 360 BRAND and THILLANA with its distinctive colour scheme, get up, lay out and other aristic features. The above said marks are used openly, continuously and exclusively by the plaintiff in respect of their products. The plaintiff's products under the said marks/labels were advertised in various TV channels.
2.4 The plaintiff came to know that the 1st and 2nd defendants are manufacturing and selling lungies under an identical trademark of the plaintiff namely " MUBARAK". They are also selling lungies under a deceptively similar mark 060 BRAND, which is a reproduction of the 360 BRAND label and RASAGULLA label, which is A reproduction of the THILLANA label. The 3rd defendant transports lungies bearing the infringed marks of the plaintiff all over Tamil Nadu.
2.5. The defendants have copied the following essential features from the plaintiff's MUBARAK label.
S Plaintiff's label Defendants'label
No
1 The device of a mosque at the left hand The device of a mosque at the left hand side side bottom of the label bottom of the label.
2 The word MUBARAK written in English at The word MUBARAK written in English at the 8/14 http://www.judis.nic.in C.S.No.516 of 2016 the centre of the label centre of the label 3 The words "100% cotton", "Gold"and The words "100 % cotton", "Gold"and "Fresh' "Fresh' written below the mark Mubarak written below the mark Mubarak 4 The device of a half moon and star above The device of a half moon and star above the the mark MUBARAK mark MUBARAK 5 Device of outstretched hands at the right Device of outstretched hands at the right side side bottom of the label. bottom of the label.
6 "100 % cotton" written in a tree like device "100 % cotton" written in a tree like device placed between the device of mosque and placed between the device of mosque and device of the outstreched hands device of the outstreched hands 7 The name and address of the plaintiff at The name and address of the 2nd defendant at the bottom of the label outside the border the bottom of the label outside the border 8 The 360 brand label right above the The 360 brand label right above the MUBARAK MUBARAK label label 2.6. The defendant has copied the following essential features from the plaintiff's 360 BRAND label along with THILLANA label.
S Plaintiff's label Defendants'label
No
1 Colour combination of red, gold, black and Colour combination of red, gold, black and
white white
2 The label is in an oval shape The label is in oval shape
3 The trademark "360 BRAND" written on The trademark "060 BRAND" written on the
the top red portion. top red portion.
4 The name and address of the plaintiff at The name and address of the 1st defendant at
the bottom of the label the bottom of the label
5 The THILLANA label right below the 360 The RASAULLA label right below the 060
BRAND label with the trademark BRAND label with the trademark "RASAGULL"
"THILLANA" written at the middle in gold written at the middle in gold colour on yellow
colour on yellow background. background.
6 The words HANDLOOM type KATTARI The words HANDLOOM type KATTARI written
written in red above the mark THILLANA in red above the mark RASAGULLA
7 The words "Extra size 2.20 mts" written in The words "Extra size 2.20 mts" written in red
red below the mark THILLANA below the mark RASAGULLA
8 The mark 360 brand written throughout The mark 060 brand written throughout the
the border border
9/14
http://www.judis.nic.in
C.S.No.516 of 2016
The defendants have deliberately adopted the impugned labels with a view to pass off their substandard inferior quality lungies and other textile goods as and for the plaintiff's superior quality lungies. The defendants are fully aware of the statutory and proprietary rights vested in the plaintiff in the said label and the popularity for their lungies and therefore, they committed infringement and passing off by using imitative marks of the plaintiff. The plaintiff suffered a lot by the wrongful activities of the defendants and if the defendant continues their act of infringement, the plaintiff will put to irreparable loss and hardship. Hence the suit.
3. The defendants 1 and 2 remained absent and were set exparte. The suit against the 3rd defendant was given up.
4. The matter was directed to place before the learned Additional Master-III for recording exparte evidence. The learned Additional Master-III, recorded the evidence of PW1 and marked Ex.P1 to Ex.P12. The documents filed by the plaintiff were compared with the original and the same were marked as Ex.P1 to Ex.P10.
5. I have perused the evidence of PW1, who is the authorised 10/14 http://www.judis.nic.in C.S.No.516 of 2016 representative of the plaintiff as well as the Ex.P1 to Ex.P10.
6. The plaintiff is a partnership firm and it has been registered as evidenced by Ex.P2. The trademarks of the plaintiff viz., " 360 BRAND" and " MUBARAK" are the registered marks under the Trademarks Act, as evidenced by Ex.P3 and Ex.P4. The Ex.P5 shows that the copyright of the trademark " 360 BRAND" with its aristic work was registered in favour of the plaintiff. Ex.P6 is the series of invoices for sale of the plaintiff's lungies and the Ex.P7 is the advertisement issued by the plaintiff for their goods. Ex.P9 and Ex.P10 are the label of the plaintiff and the defendants respectively.
7. A comparison of the Ex.P9 and Ex.P10, which are the labels " 360 BRAND" belonged to the plaintiff and "060 BRAND" belonged to the defendants clearly shows that the defendants have adopted the identical mark of the plaintiff and the same is the clear infringment of the plaintiff's trademark and label by the defendants. Admittedly, the plaintiff is the proprietor of the registered trademark 360 BRAND, MUBARAK and THILLANA as per Ex.P3 and Ex.P4 and they have obtained copyright also for the above said marks, with its aristic work, as per Ex.P5. Hence the plaintiff has statutory right to protect their trademark and copyright and if the trademark of the plaintiff is used by anybody, it amounts to infringement. 11/14 http://www.judis.nic.in C.S.No.516 of 2016
8. The evidence of PW1 remains unchallenged. The documents adduced by the plaintiff also not controverted by the defendants. Therefore, the plaintiff company has proved their case and accordingly, is entitled to get a decree with regard to the plaint prayer " a, b and c" .
9. The learned counsel appearing for the plaintiff submitted that the plaintiff is satisfied with the decree for the plaint prayer " a, b and c"
alone.
10. Accordingly,
i) The civil suit is partly decreed , in respect of the prayers " a, b and c " alone with costs, against the defendants 1 and 2. Consequently, the connected original applications and applications are closed.
ii) In respect of the other prayers, the suit is dismissed.
iii) The suit is dismissed as given up as against the 3rd defendant.
04.11.2019 Index: Yes/No Internet: Yes/No Speaking/Non Speaking order 12/14 http://www.judis.nic.in C.S.No.516 of 2016 mst Plaintiff side witness PW1 Durga Babu Plaintiff side exhibits Ex.P1 23.10.2019 Authorization letter given to PW1 Ex.P2 24.05.2007 Attested photostat copy of the Registration certificate of the plaintiff's partnership firm Ex.P3 09.10.1991 Attested photostat copy of the Registration certificate for the 360 BRAND label Ex.P4 26.05.1997 Attested photostat copy of the Registration certificate for the trademark MUBARAK Ex.P5 17.12.1992 Attested photostat copy of the registration certificate for the aristic work of 360 BRAN label Ex.P6 27.05.2016 Attested photostat copies of the invoices Ex.P7 - Attested photostat copy of the advertisement issued by the plaintiff for their goods Ex.P8 - Attested photostat copy of theinvoide of sale of the 1st defendant's product Ex.P9 - Photographs of the plaintiff's label Ex.P10 - Photographs of the defendants label 13/14 http://www.judis.nic.in C.S.No.516 of 2016 N.SATHISH KUMAR, J., mst C.S.NO.516 of 2016 and O.A.No.623, 624 and 625 of 2016 and A.No.5391, 5392 of 2019 04.11.2019 14/14 http://www.judis.nic.in