Madras High Court
Aqua Pump Industries vs Puneet Mehta on 12 July, 2016
Equivalent citations: AIR 2016 MADRAS 184, (2016) 6 MAD LJ 142 (2016) 4 MAD LW 269, (2016) 4 MAD LW 269
Author: Pushpa Sathyanarayana
Bench: Pushpa Sathyanarayana
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 12 / 07 / 2016 CORAM THE HONOURABLE MRS.JUSTICE PUSHPA SATHYANARAYANA C.S.NO.709 OF 2005 1.Aqua Pump Industries Rep. By its Managing Partner Mr.Ramaswamy Kumaravelu Thudiyalur Post, Coimbatore 641 034. Having their branch office at No.21, P.H. Road, Koyambedu, Chennai 600 107. 2.Aqua Sub Engineering Rep. By its Managing Partner Mr.Ramaswamy Kumaravelu Thudiyalur Post, Coimbatore 641 034. Having their branch office at No.21, P.H. Road, Koyambedu, Chennai 600 107. .. Plaintiffs Versus Puneet Mehta Trading as Electricals System and Controls Sector 31, Plot No.38, Greater Noida, Uttar Pradesh. .. Defendant PRAYER: Plaint filed under Order IV Rule 1 of the Original Side Rules read with Order VII Rule 1 CPC read with Sections 27, 134 and 135 of the Trade Marks Act, 1999, praying for the following judgment and decree against the defendant: (a) granting permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, offering and advertising for sale using the Trade Mark TECHNOPLUS upon the goods or in any media and use the same in invoices, letter heads and visiting cards or any other trade literature of by using any other Trade Mark which is in any way visually, phonetically or deceptively similar to the plaintiffs Registered Trade Marks TEXMO or in any manner infringing the plaintiffs registered Trade Mark Nos.315049 (SP-I)(SP-II) and 315050 (SP-I) (SP-II). (b) granting permanent injunction restraining the defendant, by themselves, their servants, agents, men or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising for sale Electric Wires and Electric Cables using the Trade Mark TECHNOPLUS or similar sounding names in the course of their business and pass off their goods using the Trade Mark TECHNOPLUS or with additions as and for the goods of the applicant or enable others to pass off. (c) directing the defendant to surrender to the plaintiffs all types of goods containing / bearing the Trade Mark TECHNOPLUS or other deceptively similar Trade Marks. (d) for a preliminary decree in favour of the plaintiffs, directing the defendant to render an account of profits made by them by the use of the Trade Mark TECHNOPLUS on the goods referred and for a final decree in favour of the plaintiffs for the amount of the profits found to have been made by the defendant, after the defendants have rendered accounts. (e) directing the defendant to pay to the plaintiffs the costs of the suit. For Plaintiffs : Mr.Gladys Daniel J U D G M E N T
The plaintiffs have filed the Civil Suit against the defendant for the following reliefs:-
(a) for granting permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, offering and advertising for sale using the Trade Mark TECHNOPLUS upon the goods or in any media and use the same in invoices, letter heads and visiting cards or any other trade literature by using any other Trade Mark which is in any way visually, phonetically or deceptively similar to the plaintiffs' Registered Trade Marks TEXMO or in any manner infringing the plaintiffs' registered Trade Mark Nos.315049 (SP-I)(SP-II) and 315050 (SP-I)(SP-II);
(b) for granting permanent injunction restraining the defendant, by themselves, their servants, agents, men or anyone claiming through him from manufacturing, marketing, distributing, offering or advertising for sale Electric Wires and Electric Cables using the Trade Mark TECHNOPLUS or similar sounding names in the course of their business and pass off their goods using the Trade Mark TECHNOPLUS or with additions as and for the goods of the applicant or enable others to pass off;
(c) to direct the defendant to surrender to the plaintiffs all types of goods containing / bearing the Trade Mark TECHNOPLUS or other deceptively similar Trade Marks;
(d) for a preliminary decree in favour of the plaintiffs, directing the defendant to render an account of profits made by them by the use of the Trade Mark TECHNOPLUS on the goods referred and for a final decree in favour of the plaintiffs for the amount of the profits found to have been made by the defendant, after the defendant has rendered accounts; and
(e) to direct the defendant to pay to the plaintiffs the costs of the suit.
2. The averments of the plaintiffs as set out in the plaint are as follows:
(a) The plaintiffs are Partnership firms registered under the Partnership Act, 1932 with the Registrar of Firms, Coimbatore, having their office at Thudiyalur Post, Coimbatore, represented by its Managing Partner Mr.Ramaswamy Kumaravelu.
(b) The first plaintiff commenced its business in the year 1974 with the objective of manufacturing different types of electrical motors and pumps such as motors which run on single phase current with capacities ranging between < H.P (one fourth Horse Power) and 1 H.P (One Horse Power), deep-well jet pumps, jet monoblocks, multistage jet pumps and monoblocks of any capacity which run on single phase current, centrifugal pumps and monoblocks upto and including 1 H.P. (One Horse Power) which run on single phase current, lateral channel pumps and lateral channel monoblocks of any capacity which run on single phase current, submersible monoblocks of any capacity which run on single phase current, reciprocating pumps for domestic use which run on single phase current and components and spares for the above products, etc.
(c) The second plaintiff commenced its business in the year 1982 with the objective of manufacturing and selling submersible motors, submersible pumps, submersible pumpset, components and spares for the above products.
(d) The plaintiffs became the registered Proprietors of the Trade Mark TEXMO in respect of the specific goods mentioned above by virtue of the order passed by the Registrar of Trade Marks on 20.04.1998. The plaintiffs have been extensively using the Trade Mark TEXMO as registered all over India continuously and substantially in respect of the goods allotted to them from the respective dates of the formation of the firms. The plaintiffs have acquired enormous goodwill in respect of the goods, on which TEXMO Trade Marks are affixed.
(e) The plaintiffs have spent substantial sums of money for advertising their products TEXMO in all forms of media. The plaintiffs have also received many prestigious awards on account of the superior quality of their goods and export business.
(f) While so, the plaintiffs came to know that the defendant had filed a Trade Mark application for registration of the Trade Mark TECHNOPLUS on 30.07.2004 claiming use of the mark TECHNOPLUS since 01.04.2000 in respect of Electric Wires and Electric Cables, through the advertisement in the Trade Mark Journal No.1327 Supplement (5) dated 31.01.2005. The plaintiffs immediately filed oppositions to the said application for registration of Trade Mark on 23.05.2005 and the same is pending before the Trade Mark Registry.
(g) The defendant has adopted the deceptively similar Trade Mark TECHNOPLUS solely for the purpose of exploiting the commercial goodwill attached to the plaintiffs' Trade Mark TEXMO. The defendant's use of the Trade Mark TECHNOPLUS is bound to create confusion and deception in the market. Under the provisions of the Trade Marks Act, the use of the identical or deceptively similar Trade Mark with respect to the same or similar goods amounts to infringement of registered Trade Mark. The use of the Trade Mark TECHNOPLUS by the defendant amounts to infringement and passing off.
(h) The plaintiffs have been carrying on business using the Trade Mark TEXMO with respect to electrical pumps and motors and other related goods since 1974. The defendant is recent entrant into this field. Considering these facts, as a prior user and a registered trade mark owner, the plaintiffs have exclusive right to the trade mark TEXMO. The defendant has no valid reasons whatsoever to use the mark TECHNOPLUS which is visually, phonetically and deceptively identical to that of the plaintiffs. The conduct of the defendant amounts to falsification of Trade Mark, an offence punishable under the Trade Marks Act, 1999 apart from action of infringement of the plaintiffs' registered mark and passing off. Hence, the plaintiffs have come up with this Civil Suit for the reliefs stated supra.
3. This Court, on 12.08.2005, in O.A.No.794 of 2005 in C.S.No.709 of 2005, has granted interim injunction restraining the defendant, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, offering and advertising for sale using the Trade Mark TECHNOPLUS upon the goods or in any media and use the same in invoices, letter heads and visiting cards or any other trade literature by using any other Trade Mark which is in any way visually, phonetically or deceptively similar to the plaintiffs Registered Trade Marks TEXMO or in any manner infringing the plaintiffs registered Trade Mark Nos.315049 (SP-I)(SP-II) and 315050 (SP-I) (SP-II). The interim injunction already granted on 12.08.2005 was made absolute on 28.02.2006.
4. The learned Master, on 14.10.2015, has directed the Registry to list the matter before this Court under the caption for Undefended Board, recording the fact that inspite of completion of service, the defendant did not enter appearance. Thereafter, when the matter was listed on 10.02.2016, a memo dated 20.01.2016 is found to have been filed by the defendant to the effect of reporting no instructions. Besides, though the name of the defendant also appeared in the cause list, there was no representation on their behalf and hence, the defendant was set ex parte on 10.02.2016.
5. Mr.T.Narendran, General Manager (Finance), on behalf of the plaintiffs has filed the proof affidavit for his chief examination to prove the suit claim besides examining himself as P.W.1 on behalf of the plaintiffs and marked the following documents as Exs.P1 to P6 as documentary evidence.
Sl.No. Exhibits Description of documents Date 1 P-1 Original authorisation letter 20.04.2016 2 P-2 Photocopy of the legal use certificates to the plaintiffs trade mark Texmo (Compared with the original)
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3P-3 Photocopy of the journal advertisement of the defendant's trade mark TECHNOPLUS
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4P-4 Office copy of the opposition filed by the plaintiffs before the trade mark registry against the defendant's trade mark TECHNOPLUS
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5P-5 Photocopy of the advertisements made in leading newspapers and magazines of the plaintiffs' trade mark TEXMO
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6P-6 Photocopy of the award given to the plaintiffs
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6. Heard the learned counsel appearing for the plaintiffs and perused the materials available on record.
7. The only question that has to be decided by this Court is whether the plaintiffs are entitled to a decree as prayer for.
8. Learned counsel appearing for the plaintiffs contended that though the plaintiffs company started their business as early as in 1974, the products of the defendant viz., electric wires and electric cables in the trade mark TECHNOPLUS are available in all the places wherever the plaintiffs' TEXMO trade mark products are marketed and the same will create confusion in the minds of the public.
9. It is settled law that no man is entitled to represent his goods or business as being the goods or business of another person, whether such representation is made by the use of any mark, name, sign, symbol, device or other means.
10. The term 'deceptively similar' has been defined in Section 2(d) of the Trade and Merchandise Marks Act, 1958, which reads as follows:-
"a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion".
Section 2(j) defines a "Mark" as including a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. The word 'trademark' means in relation to any provision other than Chapter X of the Act, vide Section 2(v):
.......(ii) in relation to the other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark registered as such under the provision of Chapter VIII".
11. To come to a conclusion whether one mark is deceptively similar to another, it would be enough if the impugned Trade Mark bears such an overall similarity to the registered trade mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
12. In the instant case, it is not in controversy that the plaintiffs have been using the trade mark TEXMO for manufacturing and selling submersible motors, pumps, pumpset and components and spares for the above products. Admittedly, the defendant is using the trade mark TECHNOPLUS for the electric wires and cables.
13. Under the provisions of the Trade Marks Act, the use of the identical or deceptively similar trade mark with respect to the same or similar goods amounts to an infringement of registered trade mark.
14. At this juncture, it would be relevant to refer to Section 29(4), which is the amended provision of the Trade Marks Act and the same is usefully reproduced hereunder:
29.Infringement of registered trade marks:
(1)...
(2)...
(3)...
(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which -
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due course takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
15. Though the articles of the plaintiffs and the defendant are not identical, indisputably, they are goods of the same or similar nature and sold across the same counter and hence, the trade mark TECHNOPLUS is undoubtedly, phonetically, deceptively similar to the plaintiffs' trade mark TEXMO, which, in the opinion of this Court, will have chances of great confusion in the market, if the trade marks are used side by side.
16. Considering the oral and documentary evidence viz., Exs.P1 to P6 adduced by P.W.1, this Court is of the view that the plaintiffs have proved the suit claim against the defendant and hence, the plaintiffs are entitled for the reliefs against the defendant, as asked for. Accordingly, this Civil Suit is decreed, as prayed for, with costs.
12 / 07 / 2016 Index : Yes/No Internet : Yes/No TK LIST OF WITNESSES EXAMINED ON THE SIDE OF THE PLAINTIFFS P.W.1 Mr.T.Narendran LIST OF EXHIBITS MARKED ON THE SIDE OF THE PLAINTIFFS Sl.No. Exhibits Description of documents Date 1 P-1 Original authorisation letter 20.04.2016 2 P-2 Photocopy of the legal use certificates to the plaintiffs trade mark Texmo (Compared with the original)
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3P-3 Photocopy of the journal advertisement of the defendant's trade mark TECHNOPLUS
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4P-4 Office copy of the opposition filed by the plaintiffs before the trade mark registry against the defendant's trade mark TECHNOPLUS
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5P-5 Photocopy of the advertisements made in leading newspapers and magazines of the plaintiffs' trade mark TEXMO
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6P-6 Photocopy of the award given to the plaintiffs
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LIST OF EXHIBITS MARKED ON THE SIDE OF THE DEFENDANT - NIL PUSHPA SATHYANARAYANA, J.
TK C.S.NO.709 OF 2005 12 / 07 / 2016