Madras High Court
Mr.A.D.Padmasingh Isaac vs Mallika Thiagarajan on 20 December, 2018
Author: M.Sundar
Bench: M.Sundar
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 20.12.2018
CORAM
THE HON'BLE MR.JUSTICE M.SUNDAR
C.S.No.461 of 2018
and O.A.Nos. 664 and 665 of 2018
1. Mr.A.D.Padmasingh Isaac
Trading as 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 (P) Ltd.,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040
Represented by its Director
Mr. Ashwin Pandian ..Plaintiffs
Vs.
Mallika Thiagarajan,
AA-19, 3rd Street,
Anna Nagar,
Chennai- 600 040. .. Defendants
This Civil Suit is preferred, under Order IV Rule 1 of O.S.
Rules and Order VII Rule 1 of Civil Procedure Code, read with
Sections 27(2),29, 134, 135 of the Trademarks Act, 1999 praying
to
(a) granting a permanent injunction, restraining the
Defendant, by itself, its servants, agents, distributors, or anyone
claiming through him from manufacturing, selling, advertising and
offering for sale of goods/service using the Trade Mark “ACHI’S
SANTHAI” or any other similar Trade Mark or similar sounding
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expression or in any media and use the same in invoices, letter
heads and visiting cards or by using any other trade mark which is
in any way visually or deceptively or phonetically similar to the
Plaintiff’s trade marks AACHI and use the same in pouches, or any
other goods/service or use the mark in invoices, letters heads and
visiting cards or any other trade literature or by using any other
trade mark which is in any way visually, or phonetically similar to
the Plaintiff’s registered Trade Mark Nos.838786, 1479159,
3371001 & 3371009 or in any manner infringe the Plaintiff’s
registered Trade Mark.
(b) granting a permanent injunction, restraining the
Defendant, by itself, its servants, agents, distributors, or anyone
claiming through him from manufacturing, selling, advertising and
offering for sale of goods/service using Trade Mark “ACHI’S
SANTHAI” or any other similar Trade Mark or in any media and use
the same in invoices, letter heads and visiting cards or by using any
other trade mark which is in any way visually or deceptively or
phonetically similar to the Plaintiffs’ Trade Mark AACHI in respect of
goods/service or use the mark in invoices, letters heads and visiting
cards or any other trade literature or by using any other trade mark
which is in any way visually, or phonetically similar to the Plaintiffs’
Trade Mark AACHI or in any manner pass off the Plaintiff’s
goods/service.
© directing the Defendant to surrender to the Plaintiffs all the
packing material, cartons, advertisement materials and hoardings,
letter-heads, visiting cards, office stationery and all other materials
containing/bearing the Trade Mark “ACHI’S SANTHAI” or other
identical trade mark used in the pouches and packets bearing the
word AACHI.
(d) directing the Defendant to render an account of profits
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made by them by the use of the impugned trademark “ACHI’S
SANTHAI” on the goods referred and decree the suit for the profits
found to have been made by the Defendant, after the Defendant
has rendered accounts:
(e) directing the Defendant to pay to the Plaintiffs the cost to
the suit, and
(f) pass such further or other order, as this Hon’ble Court
may deem fit and proper in the circumstances of the case and thus
render justice.
For Plaintiffs : Ms.Gladys Daniel
For Defendant : Set ex-parte
JUDGMENT
There are two plaintiffs and a sole defendant in the instant suit.
2. Instant suit has been filed inter-alia complaining of Infringement of plaintiffs' registered trademark and passing off qua plaintiffs' registered trademark. Injunctive reliefs in this regard have been sought for and there are incidental /ancillary limbs of prayers also.
3. Before this Commercial Division proceeds to examine the facts of this case, it is necessary to set out the trajectory of this suit thus far.
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4. As mentioned supra, there is a sole defendant in the suit.
5. Service on sole defendant was effected on 21.07.2018 before learned Master. Proceedings of learned Master dated 09.10.2018 in this regard, reads as follows:
'Sole defendant served on 21.07.2018. Hence post before Hon'ble Court.'
6. After the aforesaid proceedings of learned Master, this suit was placed before this Commercial Division, which in turn directed the suit to be listed in 'UNDEFENDED BOARD' and ultimately, set the sole defendant ex-parte on 30.11.2018. The proceedings before this Commercial Division in this regard are dated 24.10.2018, 30.10.2018 and 30.11.2018 which read as follows:
'Proceedings on 24.10.2018 Read this in conjunction with and in continuation of earlier proceedings of this Commercial Division dated 20.08.2018, which reads as follows:
'List this matter before learned Master for completion of service on the sole defendant in the main suit.'
2. Pursuant to the aforesaid proceedings, learned Master has made proceedings dated 09.10.2018, which reads as follows:
'Sole defendant served on 21.07.2018. Hence post before Hon'ble Court.' http://www.judis.nic.in 5
3. From the proceedings of the learned Master, it comes to light that sole defendant has been duly served in this suit on 21.07.2018.
4. Time limit for filing written statement prescribed under the amended 'The Code of Civil Procedure, 1908', ('CPC' for brevity) as amended by 'The Commercial Courts Act, 2015', ('said Act' for brevity) has expired. No one has entered appearance and no written statement has been filed.
5. Registry is directed to list this matter in the 'UNDEFENDED BOARD' on 30.10.2018. Registry to show the name of the sole defendant along with full/complete address as in the long and short cause titles of the plaint in the next listing.
6. List this matter in 'UNDEFENDED BOARD' on 30.10.2018.
'Proceedings on 30.10.2018 Read this in conjunction with and in continuation of earlier proceedings of this Commercial Division dated 24.10.2018.
2. Pursuant to earlier proceedings, this suit has been listed under the caption 'UNDEFENDED BOARD' today.
3. However Ms.Gladys Daniel, learned counsel for plaintiffs very fairly points out that time prescribed for completion of pleadings by the defendant is not over as yet, as the suit summons, according to her, were served on 21.07.2018.
List this matter under the same caption on 30.11.2018. http://www.judis.nic.in 6 Proceedings on 30.11.2018 Read this in conjunction with and in continuation of earlier proceedings of this Commercial Division dated 30.10.2018.
2. Suit is listed under the caption 'UNDEFENDED BOARD' today. There is no representation for the sole defendant.
3. It is pointed out that the time prescribed for completion of pleadings is now over and no written statement has been filed. Sole defendant is set ex-parte.
4. List this matter before learned Additional Master-II on 11.12.2018 for recording ex-parte evidence. Learned Additional Master-II is requested to record ex-parte evidence preferably on the same day and in any event on or before 14.12.2018.
5. Thereafter, list this matter before this Commercial Division under the caption 'ORAL ARGUMENTS' on 19.12.2018.'
7. After the aforesaid proceedings before this Commercial Division, suit was set down before learned Additional Master-II for recording ex-parte evidence. Before learned Additional Master-II, one B.Gnana Sambandam, who has been described as Assistant General Manager - Legal & Secretarial of the second plaintiff company, has been examined as P.W.1. 14 documents i.e., Exs.P1 to P14 have been marked. Thereafter, the suit file has now been placed before this Commercial Division again 'For Arguments'. http://www.judis.nic.in 7
8. Ms.Gladys Daniel , learned counsel on record for plaintiffs is before this Commercial Division.
9. Learned counsel for plaintiffs submits that crux and gravamen of the entire lis is constituted by plaintiffs' two trademark registrations in Classes 35 and 41.
10. Plaintiffs' registration in Class 41 is vide Trademark No.3371009 and the Legal Use Certificate [Trademark Registration Certificate] for this has been marked as Ex.P9. Trademark Registration Certificate in Class 35 has not been marked, but there is an averment in the plaint in this regard which remains unrefuted. Trademark registration in class 35 is Trademark No.3371003 and it is dated 26.09.2016.
11. Though the aforesaid two trademark registrations constitute the nucleus of this lis [which shall hereinafter collectively be referred to as 'suit TMs' for brevity], plaintiffs on the date of filing the plaint, had as many as 127 registrations, enumeration of which has been set out in paragraph 15 in a Tabular Column and the same reads as follows:
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12. Learned counsel for plaintiffs submits that plaintiffs had a steady growth and the manner in which suit TMs and the other aforementioned trademark registrations vest in the plaintiffs is articulated in paragraph 7 of the plaint. Learned counsel refers to paragraph 7 of the plaint, which reads as follows:
'7. A proprietary concern Aachi Spices and Foods was registered on 28.12.2006. Aachi Masala Foods (P) Ltd who acquired the trademark AACHI on 30.11.2006 from Abishek Enterprises and Naveen Products assigned the same in favour of the 1st Plaintiff, on 30.03.2007. On 01.04.2007, the Plaintiff executed a License User Agreement in favor of Aachi Masala Foods (P) Ltd. The sole proprietary concern of the 1st Plaintiff owned the Intellectual Property Rights under the trademark AACHI.
The Trademark AACHI expanded on its list of products. The business of AACHI was expanding in mammoth proportions. On 17.03.2010, Aachi Spices and Foods Private Limited was incorporated. At the time of incorporation of Aachi Spices and Foods Private Limited the Memorandum of Association of the company reiterated at clause B-11 that the Trademark AACHI along with its right, title and interst were vested with the 1st Plaintiff who already owned the Trademark AACHI. On 21.04.2010 the 1st Plaintiff entered into a LICENSE USER AGREEMENT with Aachi Spices and Foods Private Limited to use the trademark AACHI. On 21.04.2010 the 1st Plaintiff entered http://www.judis.nic.in 19 into a fresh LICENSE USER AGREEMENT with AACHI Masala Foods Private Limited.'
13. Learned counsel also submits that huge sums of monies are being spent every financial year by the plaintiffs towards advertisement expenditure and learned counsel for plaintiff submits that a tabular column giving the turnover as well as the advertisement expenditure (financial year wise) has been set out in Paragraph 14 of the plaint. Tabular column in paragraph 14 of the plaint reads as follows:
S.No. YEAR TURNOVER ADVERTISING
(in Rs) EXPENDITURE
(in Rs)
1. 1995-1996 3,96,420.00 9,893.00
2. 1996-1997 4,37,568.00 4,691.00
3. 1997-1998 5,10,755.00 352.00
4. 1998-1999 14,68,159.00 15,820.00
5. 1999-2000 20,27,457.00 16,775.00
6. 2000-2001 52,03,979.00 57,676.00
7. 2001-2002 64,12,491.00 2,13,512.00
8. 2002-2003 1,69,44,334.00 6,62,290.00
9. 2003-2004 9,00,05,884.00 19,63,479.00
10. 2004-2005 24,46,95,540.00 1,13,28,450.00
11. 2005-2006 79,47,99,230.00 4,63,96,880.00
12. 2006-2007 1,36,54,50,781.00 5,68,45,817.00
13. 2007-2008 2,07,85,55,508.00 7,87,06,261.00
14. 2008-2009 4,14,12,42,106.00 9,40,86,979.00
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S.No. YEAR TURNOVER ADVERTISING
(in Rs) EXPENDITURE
(in Rs)
15. 2009-2010 4,73,98,26,852.00 10,76,86,530.00
16. 2010-2011 6,40,40,50,524.00 11,63,97,497.00
17. 2011-2012 7,59,35,14,309.00 12,42,15,050.00
18. 2012-2013 8,82,91,64,390.00 13,72,06,476.00
19. 2013-2014 11,27,06,92,876.00 19,57,87,446.00
20. 2014-2015 13,20,61,70,537.00 21,00,17,044.00
14. According to learned counsel for plaintiffs, they came to know about the infringement of suit TMs sometime in January 2018 and the manner in which they came to know and the details of the same have been articulated in Paragraph 19 of the plaint. This Commercial Division was taken through paragraph 19 of the plaint by learned counsel for plaintiffs and the same reads as follows:
'19. That in around January 2018 to the shock of the plaintiffs, it was discovered that the Defendant’s Trade Mark application for registration of their Trade Mark ACHI’S SANTHAI under A.No.3707649 in class 41 is advertised in the Trade Mark Journal No:1834 dated 29/01/2018 at page No.6607. The Defendant is providing service with respect to arranging exhibitions in Class-41 under this impugned Trade Mark “ACHI’S SANTHAI”. Immediately the Plaintiffs’ have initiated appropriate opposition proceedings under No:930864 http://www.judis.nic.in 21 the Trade Mark Registry at Chennai opposing the Defendant’s Trade Mark application from grant of registration. Shortly thereafter, in February 2018, the Defendant Trademark application No.3707648 for the mark ACHI’S SANTHI in Class 35 was advertised in Trademark Journal No.1835. The Defendant has adopted the word ACHI’S SANTHI per se which amounts to deception and confusion in the market and an infringement of the Plaintiff’s Intellectual Property Rights.'
15. Saying so , learned counsel submitted that the publication of plaintiffs' application in the trademark journals have been marked as Exs.P11 and P13 in Classes 41 and 35 respectively. Exs.P11 and P13, which are publications in trademark journals in Classes 41 and 35 respectively are as follows:
Ex.P11 Ex.P35 http://www.judis.nic.in 22
16. Learned counsel for plaintiffs submits that plaintiffs have opposed the aforesaid applications for trademark registrations. Notices of opposition have been marked as Exs.P12 and P14. Learned counsel submits that even as of today, defendant's applications for aforesaid registrations in classes 41 and 35 are lying in / pending under objection. Learned counsel submits that stage is set in the Trade Mark Registry for hearing in the opposition proceedings.
17. Be that as it may, the trajectory of this suit thus far has been captured in various proceedings of this Commercial Division, which have been extracted and reproduced supra. A perusal of the trajectory of this suit thus far, as captured in proceedings before learned Master as well as before this Commercial Division (extracted and reproduced supra elsewhere in this judgment will reveal that sole defendant, in spite of being served, albeit by substituted service (owing to difficulty in being served through normal modes), has not chosen to come before this Commercial Division either in person or through a counsel. Obviously, no written statement has been filed.
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18. In the aforesaid backdrop, learned counsel for plaintiff very fairly points out that defendant's applications are for proposed use and it is for arranging exhibitions and also for provision of an online marketplace for buyers and sellers of goods and services as is evident from Exs.P11 and P13 respectively.
19. It has already been set out supra that as many as 14 exhibits, namely Exs.P1 to P14 have been marked and the details of the 14 exhibits are as follows:
S.No. Exhibits Description of Documents 1 P1 The original Authorisation Letter dated 08.12.2018 2 P2 (series) (2 Nos.) are the copy of the certificate of Incorporation of Aachi Masala Food Pvt. Ltd., dated 30.06.2006 and the copy of the certificate of Incorporation of Aachi Spices and Foods P. Ltd., dated 17.03.2010 (Compared with original) 3 P3 (series) (3 Nos.) are the copies of (1) Deed of Assignment between Abishek Enterprises and Aachi Masala Foods P.Ltd., dated 01.12.2006.
(2) Deed of Assignment between Naveen Product and Aachi Malasala Foods P. Ltd., dated 01.12.2006, (3) Deed of Assignment between Aachi Masala Foods P. Ltd., and Mr.A.D.Padmasingh Isaac Trading as Aachi Spices and Foods dated 30.03.2007 4 P4 The copy of Dissolution Deed between Mrs.Rani Pandian and MrA.D.Padmasingh Isaac dissolving the partnership firm, Naveen product dated 31.03.2007 (compared with original) 5 P5 (series) (3 Nos) are the copies of certificate of Commercial Tax Registration of Aachi Masala and Foods P. Ltd., dated 10.07.2006, Certificate of Commercial Tax Registration and Central Sales Tax of Aachi Spices and Foods P. Ltd., dated 28.12.2006 and 03.01.2007 (compared with original) http://www.judis.nic.in 24 S.No. Exhibits Description of Documents 6 P6 The copy of Memorandum of Association of Aachi Spices and Foods P. Ltd., Dated 06.03.2010 (Compared with original) 7 P7 (Series) (3 Nos.) are the copies of Trade Mark License User Agreement between Mr.A.D.Padmasingh Isaac trading as Aachi Spices and Foods and Aachi Masala Foods (P) Ltd., Dated 01.04.2007, Trade Mark Licence User Agreement between Mr.A.D.Padmasingh Isaac and Aachi Spices and Food P.Ltd.,. Dated 21.04.2010, Trade Mark License User Agreement between Mr.A.D.Padmasingh Isaac and Aachi Masala Foods P. Ltd., Dated 21.04.2010 (compared with original) 8 P8 The copy of List of Products Manufactured and Marketed by the plaintiff's bearing the Trade Mark “Aachi”.
9 P9 (series) (4 Nos) are copies of Legal Use Certificate and Trade Mark Under No.838786, 1479159, 3371001 and 3371009 (Compared with original) 10 P10 The copy of the Trademark Registration Certificate of the Mark Aachi in various countries around the world (compared with original) 11 P11 The Defendant Trade Mark A.No.3707649 dated 20.12.2017 Class 41 (under Section 65 B Indian Evidence Act, 1872) 12 P12 The Notice of opposition dated 26.04.2018 under Section 65N Indian Evidence Act, 1872) 13 P13 The Defendant Trade Mark A.No.3707648 dated 20.12.2017 Class 35 (under Section 65 B Indian Evidence Act, 1872) 14 P14 The Notice of opposition dated 26.04.2018 (under Section 65B Indian Evidence Act, 1872)
20. This Commercial Division has perused the deposition of PW1 as well as the aforesaid exhibits. Deposition of PW1 is cogent and convincing. The aforesaid exhibits (some of which have been alluded to supra) are such that they compliment, buttress and http://www.judis.nic.in 25 bolster the plaint averments. This takes us to the prayer paragraph in the plaint. Prayer paragraph in the plaint is Paragraph No.31 and the same reads as follows:
' 31. The Plaintiffs, therefore, pray for a Judgement and Decree for:
(a) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale of goods/service using the Trade Mark “ACHI’S SANTHAI” or any other similar Trade Mark or similar sounding expression or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiff’s trade marks AACHI and use the same in pouches, or any other goods/service or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plaintiff’s registered Trade Mark Nos.838786, 1479159, 3371001 & 3371009 or in any manner infringe the Plaintiff’s registered Trade Mark.
(b) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale of goods/service using Trade Mark “ACHI’S SANTHAI” or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs’ Trade Mark AACHI in respect of goods/service or use the mark in invoices, letters heads and visiting cards or http://www.judis.nic.in 26 any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plaintiffs’ Trade Mark AACHI or in any manner pass off the Plaintiff’s goods/service.
(c) directing the Defendant to surrender to the Plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the Trade Mark “ACHI’S SANTHAI” or other identical trade mark used in the pouches and packets bearing the word AACHI.
(d) directing the Defendant to render an account of profits made by them by the use of the impugned trademark “ACHI’S SANTHAI” on the goods referred and decree the suit for the profits found to have been made by the Defendant, after the Defendant has rendered accounts:
(e) directing the Defendant to pay to the Plaintiffs the cost to the suit, and
(f) pass such further or other order, as this Hon’ble Court may deem fit and proper in the circumstances of the case and thus render justice.'
21. From the narrative supra, it is clear that plaintiffs are entitled to an injunctive decree in terms of sub-paragraph (a) of prayer paragraph. With regard to sub-paragraphs (b), (c) and (d) as the defendant is only a proposed user and as there is no material before this Commercial Division, as of today, to show the actual use of the mark by the defendant, these prayer limbs are not granted for the present reserving the rights of the plaintiffs in this regard, if cause of action arises in future.
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22. This Commercial Division now considers the prayer limb for costs contained in sub-paragraph (e) and the usual residuary limb in any prayer paragraph (contained in sub-paragraph (f)) together.
23. This suit has been presented on 10.07.2018. The defendant has applied for registration of marks [exhibits P11 and P13] as alluded to supra and are pursuing the same before the Trademark Registry, while it is being opposed and contested by the plaintiffs. Notwithstanding the fact that plaintiffs have taken all efforts for service of suit summons in usual mode, the defendant compelled the plaintiff to effect service through substituted service. The proceedings of learned Master extracted supra will reveal that the plaintiffs have ultimately effected service by way of substituted service as all conventional methods did not yield result. The obtaining position of simultaneously pursuing the applications before the Trademark Registry on the teeth of opposition / objection by the plaintiffs would show that the defendant has deliberately evaded service qua conventional methods.
24. However, the defendant has been ultimately served by resorting to substituted service.
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25. Learned counsel for plaintiffs requests this Commercial Division to consider imposing compensatory costs/exemplary costs on defendant in the light of conduct of the defendant which has been referred to supra. Learned counsel also pointed out that the defendant has compelled plaintiffs to carry this matter for a substantial time in this Court, expending money, energy and effort. Reference to Section 35-A 'The Code of Civil Procedure, 1908' ('C.P.C.' for brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity) was also made. Section 35-A provides for compensatory costs in respect of false or vexatious defences. In the instant case, defendant pursuing the trademark registration applications on the teeth of opposition, but evading conventional modes of service, compelling substituted service and not appearing before this Court even after service being effected through substituted service, in the considered view of this Commercial Division will qualify as a vexatious defence (within the meaning of Section 35-A of amended CPC as amended by said Act) as it is a vexatious manner of defending a suit. Be that as it may, in the light of the trajectory and in the light of the defendant's approach to this suit, this Commercial Division is convinced that it is appropriate to impose compensatory costs of Rs.1 lakh (Rupees One Lakh only) on the defendant.
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26. Plaintiffs will obviously be entitled to costs as the plaintiffs have incurred substantial expenditure in carrying this suit to its logical end.
27. Suit is decreed with costs and compensatory costs as set out supra. Consequently, connected interlocutory applications are closed.
20.12.2018 gpa Index: yes/no http://www.judis.nic.in 30 M.SUNDAR.J. gpa/ssb C.S.No.461 of 2018 & O.A.Nos.664 and 665 of 2018 20.12.2018 http://www.judis.nic.in