Bombay High Court
Siddhant Icecreams Llp And 3 Ors vs Venkata Siva Suhas Kumar Bommisetty And ... on 24 February, 2022
Author: R.I. Chagla
Bench: R.I. Chagla
Digitally signed
by JITENDRA
JITENDRA SHANKAR
SHANKAR NIJASURE
Date:
NIJASURE 2022.02.26
18:04:56 +0530
910-ial-4383-2022.doc
jsn
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (L) NO. 4383 OF 2022
IN
COMM. IP SUIT (L) NO. 4378 OF 2022
Siddhant Icecreams LLP and Ors. ...Applicants/
Plaintiffs
Versus
Venkata Siva Suhas Kumar Bommisetty & ...Defendants
Ors.
----------
Mr. Hiren Kamod, with Mr. Mustafa Safyuddin i/b. ABH Law
LLP for the Applicants / Plaintiffs.
----------
CORAM : R.I. CHAGLA J.
DATE : 24TH FEBRUARY, 2022
ORDER :
1. The Plaintiffs seek to move without notice for the reasons set out in paragraph 41 of the Plaint. This is an action for infringement of the Plaintiff's registered NATURAL trade marks combined with a cause of action for passing off. Mr. Kamod, Ld. Advocate for the Plaintiffs, submitted that since leave under Clause XIV of the Letters of Patent (Bombay) to combine the cause of action for passing off with the cause of action for infringement of trade marks is not obtained, the 1/15 910-ial-4383-2022.doc Plaintiffs are presently only pressing for reliefs in respect of infringement of their NATURAL trade marks and shall press for the relief of passing off after obtaining such leave.
2. It is stated that Plaintiff Nos. 1, 2 and 4 have been promoted and founded by Plaintiff No. 3 and are owned by Plaintiff No.3 and his family members. It is stated that the Plaintiff is engaged inter alia in the business of manufacturing, marketing, selling, distributing and retailing of ice creams and ice cream shakes and allied / ancillary products and services through ice cream parlors. It is stated that ice creams bearing the NATURAL family marks are exclusively associated with the business of the Plaintiffs. It is stated that the Plaintiffs' NATURAL / trade mark and its brand extensions are well known, famous and household marks.
3. It is stated that in or about the year 1984, Plaintiff No. 3 achieved a breakthrough by combining traditional and contemporary methods of making artisan ice-creams and also devised/invented an ice cream making machine which 2/15 910-ial-4383-2022.doc revolutionized the production process of artisan ice cream making. It is stated that Plaintiff No. 3 adopted the mark NATURAL and launched a variety of ice creams and ice cream based products in favours such as tender coconut, strawberry, mango, jackfruit and malai under the mark NATURAL through his proprietary concern M/s Natural Ice Creams. Copies of registrations / statutory licenses issued to Plaintiff No.3 in respect of its NATURAL ice creams business in 1984 are at Exhibits A1 to A3 to the Plaint. A statement of M/s. Natural Ice Creams' turnover / sales fgures for the years 1985 to 1994, except the years 1986-1987 and 1992-1993, is reproduced at paragraph 3 of the Plaint.
4. It is stated that in view of the substantial increase of NATURAL ice creams' business, Plaintiff No.3 promoted Plaintiff No. 1 and thereafter Plaintiff No. 2 for the purposes of carrying on and continuing and expanding the NATURAL ice creams business. NATURAL family marks are registered / applied for registration in the name of Plaintiff No.1. Plaintiff No.2 is the master franchisee of Plaintiff No.1. Plaintiff No.2 also manufactures ice creams and allied products under the NATURAL family marks and supplies the same to the network 3/15 910-ial-4383-2022.doc of franchisees for onward sales of NATURAL ice creams and ice creams based products through NATURAL ice cream parlors.
5. It is a stated that the Plaintiffs have several registrations / pending applications for their NATURAL logo ("NATURAL logo") and the word NATURAL in various classes including classes 29, 30, 35, 42 and 43. A table of the Plaintiffs' trade mark registrations for the NATURAL logo in Classes 29 and 30 is reproduced at paragraph 6 of the Plaint. Copies of certifed copies of entries in the Register / certifcates for use in legal proceedings in respect of the Plaintiff's said trade mark registrations bearing nos. 641592, 1143035, 1209159 and 1209160 are at Exhibits B1 to B4 to the Plaint. A table setting out the particulars of Plaintiffs' said trade mark applications for the word mark "NATURAL" in classes 29, 30, 35 and 43 is reproduced at page 11 of the Plaint.
6. It is stated that since 1984, the Plaintiffs have been continuously using the mark NATURAL and the NATURAL logo. 4/15
910-ial-4383-2022.doc It is stated that in addition thereto, since October 2014, the Plaintiffs have also adopted and used unique variations / adaptations of the mark NATURAL in relation to their integrated ice cream business being ;
; ; and unique logos being ; ; ; and also the tag line . It is stated that the Plaintiffs have
obtained registrations / fled applications for registering these marks in classes 29, 30, 35 and 43. A table setting out the particulars of the Plaintiffs' trade mark registrations for the aforesaid variations / adaptations of the mark NATURAL is reproduced at paragraph 7 of the Plaint. Copies of certifed 5/15 910-ial-4383-2022.doc copies of entries in the Register / certifcates for use in legal proceedings in respect of the Plaintiffs' marks bearing nos. 3177578, 3177573, 3177579 and 3177580 and 3177576 are at Exhibits B5 to B8 to the Plaint.
7. It is stated that ice creams and related products bearing the NATURAL Family Marks are sold through franchised ice cream parlors located in several places across India on an extensive basis. It is stated that the Plaintiffs have a large network of over 130 franchised ice cream parlors in several places across India selling goods and rendering services under the NATURAL Family Marks. It is stated that for the period between December 2017 and May 2021 the Plaintiffs received more than one lakh enquires through their website for grant of a franchise. The franchisees of the Plaintiffs (i) use the NATURAL Family Marks (ii) sell ice creams and allied/ ancillary products and render services including retailing and ice cream parlor services under/ bearing the NATURAL Family Marks (iii) use signage, menu cards/ rate cards, packaging material and uniforms bearing the NATURAL Family Marks (iv) carry on activities as per Plaintiffs' business format; so as to indicate and suggest to the 6/15 910-ial-4383-2022.doc public at large that they are authorized franchisees of the Plaintiffs. It is stated that the Plaintiffs' ice cream parlors are popularly known as NATURAL or NATURALS ice cream parlors. Statements of the Plaintiff's annual approximate turnover and promotional expenses for the years 1994 to 2021 are at paragraphs 19 and 21 of the Plaint. A statement setting out the quantity of ice creams bearing the NATURAL Family Marks manufactured and sold by the Plaintiffs to their NATURAL franchisees from 2014-2021 is at paragraph 16 of the Plaint. A perusal of the statement shows that in the years 2018-2019 and 2019-2020 the Plaintiffs sold over 47 Lakh kilos of ice cream each year. Plaintiffs' Auditor's Certifcate in support of the statement is at Exhibit J to the Plaint. It is stated that the Plaintiffs' goods bearing the NATURAL Family Marks have a presence and are extensively sold through online platforms such as Swiggy, Zomato, Thrive and Amazon.
8. It is stated that on 12th April 2019, the Plaintiff No. 4 with the permission of the Plaintiff No.1, launched a gourmet version of the Plaintiff's products / business under "NATURAL 7/15 910-ial-4383-2022.doc Now", series of marks shown at paragraph 25 of the Plaint. It is that the Plaintiff No.4's turnover from the use of NATURAL Now series of marks from 12th April 2019 to 31st March 2021 is Rs. 3,04,30,385/-.
9. It is stated that over the years, NATURAL (along with its family marks and NATURAL Now series of marks) has acquired enormous reputation and goodwill and has become a well-known, famous and iconic brand and is associated by the trade, consumers and the public at large with the Plaintiffs exclusively. It is stated that NATURAL (along with its family marks and NATURAL Now series of marks) is a leading brand for ice creams and products derived from ice creams. It is stated that crores of customers patronize the products of the Plaintiffs sold under the NATURAL Family Marks and NATURAL Now series of marks.
10. Mr. Kamod submits that in December 2021, the Plaintiffs learnt that the Defendant Nos. 1 to 4 are offering their ice creams under the impugned trade mark "Mooow NATURALS" / "Natural Icecreams Mow" in Andhra Pradesh on 8/15 910-ial-4383-2022.doc Defendant Nos. 5 and 6's online platforms viz. Zomato and Swiggy, respectively. Printouts of extracts from Defendant Nos. 5 and 6's online platforms showing the Defendant Nos. 1 to 4's listing bearing the impugned "Mooow NATURALS" and "Natural Icecreams Mow" trade marks are at Exhibits KK and LL to the Plaint. Printout of a receipt dated 6th December 2021 issued by the Defendant No. 5's platform for an order placed on the Defendant Nos. 1 to 4 is at Exhibit MM to the Plaint. Photograph of the Defendant's ice-cream up and carry bag bearing the impugned "Mooow NATURALS" trade mark are Exhibits NN Colly and OO to the Plaint, respectively. It is stated that Defendant Nos. 1 to 3 are jointly manufacturing and selling the impugned products. The packaging of the impugned product states that Defendant No.3 is the manufacturer and marketer of the impugned product. A perusal of the online records in respect of the FSSAI License numbers shown on the Defendants' impugned product and their listing on Zomato shows that Defendant No.3 is a proprietary concern of Defendant No.1. The extracts also show the involvement of Defendant No.2. Online MCA records show that Defendant No.1 is a Director of Defendant No.2 and the offcial email address of Defendant No.2 viz. [email protected], which email 9/15 910-ial-4383-2022.doc address is also printed on the packaging of the impugned product. Extracts from the offcial FSSAI website in respect of FSSAI License Nos. 11220333001469, 10117009000080 and 10121009000002 are at Exhibits PP-1, PP-2 and PP-3 to the Plaint, respectively. Extract from the offcial MCA website in respect of Defendant No.2 is at Exhibit QQ to the Plaint. The receipt issued by Defendant No.5 for the impugned product shows that the Defendant No. 4 is supplying the impugned products. It is stated that Defendant No. 4 is connected with or controlled by Defendant No.1. An extract from the Defendants' Facebook showing the mark "Mooow Natural Icecreams is at Exhibit RR to the Plaint. It is stated that the Defendants domain name www.mooownaturals.com is not functional / is dormant.
11. Mr. Kamod has further submitted that a bare perusal of the photographs of the Plaintiffs' and the Defendants' packaging/cups and carry bags bearing their respective trade marks would reveal that the Defendants' impugned marks "Mooow NATURALS" and "Natural Icecreams Mow" are nearly identical with, and / or in deceptively similar to the Plaintiff's NATURAL Family Marks and NATURAL Now 10/15 910-ial-4383-2022.doc series of marks including the registered NATURAL Family Marks. He has submitted that the Defendants are writing the tag line "Icecream as natural as possible" along with the impugned trade mark wherein the term "natural" is used in a descriptive sense. Thus, the Defendants' use of the term "natural" in the impugned mark cannot ever be construed to be in a descriptive sense. He has submitted that the Plaintiff has approached this Court at the earliest possible instance.
12. Mr. Kamod submits that in such circumstances it is absolutely just and necessary that an ex-parte ad interim order be passed restraining the Defendants from infringing the Plaintiffs' registered trade marks and passing off their impugned goods as those of the Plaintiffs'. He has submitted that the balance of convenience is in favour of the Plaintiffs and against the Defendants and unless the interim reliefs as prayed for are granted, the Plaintiffs will continue to suffer irreparable injury which cannot be compensated in the form of money.
13. I have heard the submissions in detail and perused the record. The material produced before me, prima facie, shows that the Plaintiffs are the proprietors of the NATURAL 11/15 910-ial-4383-2022.doc Family Marks and NATURAL Now series of marks. The material also shows that the Plaintiffs have also acquired common law rights in the same. A comparative table of the rival marks and rival artistic works is reproduced below:
DEFENDANTS' PLAINTIFFS' MARK IMPUGNED MARK
14. Prima facie, there is no manner of doubt that the Defendants' impugned "Mooow NATURALS" and "Natural 12/15 910-ial-4383-2022.doc Icecreams Mow" trade mark are nearly identical with and / or deceptively similar to the Plaintiffs' NATURAL Family Marks and NATURAL Now series of marks. The Defendants are offering the same/similar services and goods as those of the Plaintiffs and in respect of which the Plaintiffs have obtained registrations of their NATURAL trade marks. I am of the prima facie view that the use of the impugned marks "Mooow NATURALS" and "Natural Icecreams Mow" by the Defendants is as a trade mark and is not in a descriptive manner. I am of the further view that the similarity between the rival trade marks cannot be a matter of co-incidence. The adoption and use of the impugned mark appear to be deliberate and dishonest. In these circumstances, a strong prima facie case for the grant of ad-interim reliefs is made out. The balance of convenience tilts in favour of the Plaintiffs. The Plaintiffs are also likely to suffer irreparable injury if the Defendants' acts of infringement continue.
15. In view of what is stated in paragraph 41 of the Plaint, I am satisfed that the object of granting the following relief would be defeated if notice of this application is given to the Defendants. There will be an ad interim order in terms of 13/15 910-ial-4383-2022.doc prayer clauses (a) and (c) of the Interim Application against Defendant Nos.1 to 4, which read thus:
"(a) That pending the hearing and fnal disposal of the suit, the Defendants, their subordinates, agents and all other persons claiming under or through the Defendants be restrained by an order and injunction of this Hon'ble Court from infringing any of the Plaintiffs' NATURAL Family Registered Marks, i.e. the marks bearing registration nos. 641592, 1143035, 1209159, 1209160, 3177578, 3177573, 3177579, 3177580 in any manner and from using the Impugned NATURAL Marks or any other mark similar to the NATURAL Family Registered Marks upon or in relation to any goods / services for which the NATURAL Family Registered Marks are registered or upon or in relation to any goods or services similar thereto and from selling, offering for sale, advertising, or dealing in any products or rendering any services under the Impugned NATURAL Marks or any mark similar to any of the NATURAL Family Registered Marks and from using any of the Impugned NATURAL Marks or any other mark similar to the NATURAL Family Registered Marks upon or in relation to any products, packaging, advertisement, or on social media or from using the domain name www.moonaturals.com or any other domain name having NATURAL/ NATURALS or any other mark similar to the NATURAL Family Registered Marks as a part thereof and from using any of the Impugned NATURAL Marks as depicted in Exhibits "KK', 'LL', 'MM', 'NN', 'OO' or 'RR' to the plaint ;"
(c) That pending the hearing and fnal disposal of the suit, the Defendants, their subordinates, agents and all other persons claiming under or through the Defendants be ordered and directed to forthwith remove all online advertisements / social media posts or pages which depict any of the Impugned NATURAL Marks or any other mark resembling any of the NATURAL Family Marks;
14/15
910-ial-4383-2022.doc
16. The Plaintiff is to comply with the provisions of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 within 7 days from today.
17. The order of injunction shall continue till 24th March 2022. List the matter along with the Clause XIV Leave Petition for further ad-interim reliefs on 22nd March 2022. Notice of this ad-interim order shall be served on the Defendants by the Advocates for the Plaintiffs.
18. Plaintiffs are granted liberty to renew their application for further reliefs on the adjourned date.
19. Liberty to the Defendants to apply for variation of this order with 5 clear working days prior notice to the Plaintiff.
20. This order will be digitally signed by the Private Secretary of this Court. All concerned will act on production by fax or email of a digitally signed copy of this order.
[R.I. CHAGLA J.] 15/15