Madras High Court
Lotte India Corporation Limited vs A.C.N.Confectionery on 18 October, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.432 of 2012
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED 18.10.2019
THE HONOURABLE MR. JUSTICE N.SATHISH KUMAR
C.S.NO.432 of 2012 and
A.No.2785 of 2012
Lotte India Corporation Limited,
Second Floor, Murugesan Complex,
84, Greams Road, Thousand Lights,
Chennai 600 006.
rep. by its Company Secretary,
Mr.T.G.Karthikeyan ... Plaintiff
Vs.
A.C.N.Confectionery,
233/4B1, Bangalore High Road,
Konavattam, 632 013,
Vellore District. ... Defendant
PRAYER Civil Suit filed under Order IV Rule 1 of the Original Side
Rules and Order VII Rule 1 of the Code of Civil Procedure read with Sections
27, 28, 29, 134 and 135 of the Trademarks Act, 1999 and Section 51, 54, 55
and 62 of the Copy Right Act, 1957 to grant a decree and judgment for
a) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, legal representatives, successors in
business, assigns, servants, agents transporters, distributors, printers,
stockists, wholesalers, dealers, retailers, advertisers or any one claiming
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through or under them from infringing plaintiff's registered trademarks
LOTTE COFFY BITE label/wrapper by manufacturing, distributing, marketing,
selling, offering for sale, advertising or in any other manner dealing in
toffees, chocolates, confectionery etc, or any other product bearing an
almost identical trademark COFEE TIME and /or package, wrapper,
container, carton, label with colour scheme, getup, layout which are almost
identical/similar to the essential features of plaintiff's registered trade mark
COFFY BITE label/wrapper,
b) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, their legal representative, successors
in business, assigns, servants, agents, transporters, distributors, printers,
stockists, wholesalers, dealers, retailers or any one claiming through or
under them from committing acts of copyright infringement by making
substantial reproduction of the plaintiff's copyright in the artistic work COFY
BITE Labels/wrappers by use of identical colour scheme of red, white and
yellow with blue background for their COFFEE TIME label, wrapper or in any
other manner whatsoever ;
c) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, their legal representative, successors
in business, assigns, servants, agents, transporters, distributors, printers,
stockists, wholesalers, dealers, retailers or any one claiming through or
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under them from committing acts of passing off and enabling others to pass
off by manufacturing, distributing, marketing, selling, offering for sale,
advertising or in any other manner dealing in toffees, chocolates
confectionery etc., or any other product bearing an almost identical
trademark COFFEE TIME and / or package, wrapper, container, carton, label
with colour scheme, getup, layout which are identical/similar to plaintiff's
trade dress and get up in COFY BITE label/wrapper;
d) an order to the defendants to surrender to the plaintiff for
destruction, all containers, pouches, prints, dies, blocks, moulds and plates,
scree prints, packing and advertising material and any other material in their
possession, bearing the mark COFFEE TIME which are a substantial
reproduction of the plaintiff's trade dress and get up and copy right in the
aristic work COFFY BITE label/wrapper amounts to infringement of plaintiff's
registered trademark and copyright therein and amounts to passing off
defendants' goods as and for plaintiff's goods.
e) a preliminary decree directing the defendants to render
account of profits made by use of trademark and artistic work COFFEE TIME
label/ wrapper and 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.
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f) a direction to the defendant to pay to the plaintiff a sum of
Rs.1,00,000/- as damages for their wrongful and illegal activities by use of an
almost identical trademark COFEE TIME label and artistic work COFEE TIME
label and for costs.
For Plaintiff : Mr.Arun C Mohan
For defendant : Mr. Satish Kumar
for Mr.PCN Raghupathy
JUDGMENT
This suit has been filed for a) a permanent injunction restraining the defendants by themselves, their partners, proprietor, 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 LOTTE COFFY BITE label/wrapper by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates, confectionery etc, or any other product bearing an almost identical trademark COFEE TIME and /or package, wrapper, container, carton, label with colour scheme, getup, layout which are almost identical/similar to the essential features of plaintiff's registered trade mark COFFY BITE label/wrapper, 4 of 9 http://www.judis.nic.in C.S.No.432 of 2012
b) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representative, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or under them from committing acts of copyright infringement by making substantial reproduction of the plaintiff's copyright in the artistic work COFY BITE Labels/wrappers by use of identical colour scheme of red, white and yellow with blue background for their COFFEE TIME label, wrapper or in any other manner whatsoever ;
c) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representative, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates confectionery etc., or any other product bearing an almost identical trademark COFFEE TIME and / or package, wrapper, container, carton, label with colour scheme, getup, layout which are identical/similar to plaintiff's trade dress and get up in COFY BITE label/wrapper; 5 of 9 http://www.judis.nic.in C.S.No.432 of 2012
d) an order to the defendants to surrender to the plaintiff for destruction, all containers, pouches, prints, dies, blocks, moulds and plates, scree prints, packing and advertising material and any other material in their possession, bearing the mark COFFEE TIME which are a substantial reproduction of the plaintiff's trade dress and get up and copy right in the aristic work COFFY BITE label/wrapper amounts to infringement of plaintiff's registered trademark and copyright therein and amounts to passing off defendants' goods as and for plaintiff's goods.
e) a preliminary decree directing the defendants to render account of profits made by use of trademark and artistic work COFFEE TIME label/ wrapper and 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) a direction to the defendant to pay to the plaintiff a sum of Rs.1,00,000/- as damages for their wrongful and illegal activities by use of an almost identical trademark COFEE TIME label and artistic work COFEE TIME label and for costs.
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2. The learned counsel appearing for the plaintiff submitted that the defendant is proposed to change their label and if the defendant continue to use the label in changed version, the plaintiff has no objection at all.
3. The learned counsel appearing for the defendant submitted that the counter affidavit, which was filed to the applications filed for grant of injunctions, would go to show that the label was in changed version and that the defendant is continuing the using of changed label version and hence, there is no infringement on the plaintiff's Trademark by the defendant.
4. Inview of the above submissions, the defendant is directed to use the label in changed version, as shown in the counter affidavit and also directed not to use the label of the plaintiff's Trademark in future. 7 of 9 http://www.judis.nic.in C.S.No.432 of 2012
5. Accordingly, the suit is decreed as prayed for in the plaint. However, taking into consideration the settlement entered into between the parties, there will be no order as to costs. The connected application is closed.
18.10.2019 Index: Yes/No Internet: Yes/No Speaking/Non Speaking order mst 8 of 9 http://www.judis.nic.in C.S.No.432 of 2012 N.SATHISH KUMAR, J.
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