Madras High Court
Naidu Hall Family Store vs Moham Retail Private Limited on 6 January, 2025
Author: P.Velmurugan
Bench: P.Velmurugan
C.S (Comm. Div.) No.325 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved On 21.12.2024
Pronounced On 06.01.2025
Coram:
THE HONOURABLE MR. JUSTICE P.VELMURUGAN
C.S (Comm. Div.) No.325 of 2020
Naidu Hall Family Store
Rep. by its Partner Mr.G.Venugopal
56, Pondy Bazar
T.Nagar, Chennai - 600 017
Tamil Nadu ... Plaintiff
Vs.
Moham Retail Private Limited
Rep. by its Director
Mr.Sujay Kanth
No.10, 5th Cross, 16th Main,
KSRTC Layout, J.P.Nagar II Phase,
Bangalore - 560078
Also having a Ware House
at 13/3, 20, Kamaraj Nagar,
2nd Main Road, Old Narasingha Puram
Nehru Nagar, Adyar
Chennai - 20 ... Defendant
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Prayer: Plaint filed under Order IV Rule 1 of O.S. Rules read with
Order VII Rule 1 of C.P.C. and read with Sections 27, 28, 29, 134 and 135
of Trade Mark Act, 1999 read with Section 51, 55, 62 of Copyright Act
read with Section 7 of the Commercial Courts, Commercial Division adn
Commercial Appellate Division of High Courts Act, No.4 of 2016,
praying to pass judgment and decree against the defendant on the
following reliefs claimed;
a. A perpetual injunction restraining the defendant
by itself/themselves or their directors, men partners,
proprietors, stockiest, dealers, servants, agents,
franchisees, successors in interest, licensees, assignees,
representatives or any of them claiming through them
from in any manner infringing the plaintiff's Registered
Trade Mark "NAIDU HALL" by selling any products or
rendering any service under impugned trade mark or in
any way be connected with NAIDU HALL mark or any
other deceptively similar Trade Mark carrying such
infringing manner of use in respect of impugned goods
and/or identical/allied/cognate services/goods or any
other identical or similar Trade Mark and placement of
expression/or in any other manner whatsoever.
b. A perpetual injunction restraining the defendant
by itself/themselves or their directors, men, partners,
proprietors, stockiest, dealers, servants, agents,
franchisees, successors in interest, licensees, assignees,
representatives or any of them claiming through them
from in any manner infringing the Plaintiff's copyright
over the artistic work, colour scheme, layout, get-up and
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lettering style, trade dress in the Trade Mark label
"NAIDU HALL" by use of identical or deceptively
similar trade dress, colour scheme, artistic work, get-up
and placement of expression having the label "NAIDU
HALL" or any deceptively similar label or in any other
manner whatsoever.
c. A perpetual injunction restraining the defendant
by itself/themselves or their directors, men, partners,
proprietors, stockiest, dealers, servants, agents,
franchisees, successors in interest, licensees, assignees,
representatives or any of them claiming through them
from in any manner Passing off or enabling passing off
of the defendant's goods and services under the trade
mark label "NAIDU HALL" or any other deceptively
similar Trade Mark/Trade dress as and for the goods of
the plaintiff under the Trade Mark "NAIDU HALL"; or
in any other manner whatsoever.
d. A perpetual injunction restraining the defendant
by himself/themselves or their directors, men, partners,
proprietors, stockiest, dealers, servants,
agents, franchisees, successors in interest, licensees,
assignees, representatives or any of them claiming
through them from in any manner using NAIDUHALL
1939 and logo or any other mark deceptively or
confusingly similar to the Plaintiff's NAIDU HALL
mark from social media, websites including but not
limited to www.naiduhall.com, www.facebook.com.
www.instagram.com, in.pinterest.com, www.youtube.
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C.S (Comm. Div.) No.325 of 2020
com, etc. and use in whatsoever manner, in relation to
their existing and/or any future business the trade mark
NAIDU HALL or any variations of the same consisting
the expression NAIDU HALL or otherwise in their
domain name, e-mail id or any other online platform.
e. The defendant be ordered to surrender to the
plaintiff for destruction all name boards, packing
materials, printer bills, cartons, sachets, labels and other
materials bearing the impugned mark "NAIDU HALL"
along with artwork and trade dress which is identical
with and/or deceptively similar to that of the plaintiff's
trade mark/label/package "NAIDU HALL"; do the
plaintiff to distinction.
f. The defendant be ordered to prepare and submit
an account of profits made by them by the unlawful use
of the Trade Mark label of the plaintiff and thereafter to
pass a final decree upon ascertaining the accounts, in
favour of the plaintiff and against the defendant.
g. For the costs of the suit.
For Plaintiff : Mr.R.Sathish Kumar
for Mr.Gokul Krishnan
For Defendant : M/s.S.Suba Shiny
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C.S (Comm. Div.) No.325 of 2020
JUDGMENT
This suit is filed by the plaintiff seeking perpetual injunction restraining the defendant from in any manner infringing the plaintiff's registered trade mark, copyright and passing off and for other consequential relief.
2. The brief averments of the plaint is that late Mr.M.G.Naidu founded NAIDU HALL in 1939 as a blouse-tailoring unit in a garage. Once he built up a steady Clientele, he moved to Pondy Bazaar, Chennai and added ladies underclothing to his merchandise. For a while, this remained the main business until they decided to add Salwars, Saris and western wear so that it would have a wider appeal.
2.1. Mr.M.G.Naidu began his journey with a single sewing machine in the corridor of his rental residence. His rejuvenating designs and patterns of brassiers, proactive thinking and unique marketing strategy, helped him to establish NAIDU HALL as a common name among women. 5/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Following his footsteps, with his valuable inputs and ability to diversify the products, NAIDU HALL remains at the top of the business today.
2.2. Through wide, long solid and enduring use of the Trade Mark NAIDU HALL since 1939 by the founder and his successors, the trade mark NAIDU HALL has acquired distinctiveness, recognition and standing in the market. Through their ceaseless efforts, the plaintiff has carved a niche for themselves in the genre of their goods and the source of origin has been strongly established as the Trade Mark hailing from the family of late Mr.M.G.Naidu. Members of trade and public draw utmost nexus of the Trade Mark NAIDU HALL to the exclusive proprietary rights of the legal heirs of late Mr.M.G.Naidu and in the past decade that of the plaintiff.
2.3. In view of the aforesaid facts, the plaintiff is the sole owner and exclusive user of the trademark NAIDU HALL (including its formative marks NAIDU HALL THE FAMILY STORE and logo etc, hereafter 6/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 collectively referred to as the NAIDU HALL mark) by virtue of their bona fide adoption and use of the mark for which they also own several trade mark registrations. The plaintiff use the mark NAIDU HALL as a trade mark in relation to their vast range of products and services and as a key, leading, prominent and essential portion of its corporate name, trade name and trading style in respect of various aspects of its operation and activities.
2.4. As a prior owner and subsequent registrant of the NAIDU HALL mark, the plaintiff owns the exclusive rights thereto as a Trade Mark in relation to its offerings. Such rights derive not only from the common law but also from the statutory provisions of the Trade Marks Act, 1999. Apart from Trade Mark applications/registrations, they also own the domain name registration, naiduhall.co.in since November 22, 2007, wherein they conspicuously use the NAIDU HALL mark for disseminating, marketing, advertising and selling their goods and services. 7/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 2.5. As such, tremendous effort, man power, money, sweat and blood have gone into the creation of popularity over the NAIDU HALL mark. Resultantly immense goodwill and high level of popularity has accrued to them over the NAIDU HALL marks. Due to such long, extensive and continuous use coupled with wide publicity, it has become distinctive and exclusively associated with the plaintiff and recognized by the trade and public as a well-known trade mark.
2.6. The plaintiff submits that, NAIDU HALL is the essential feature of the aforementioned mark and exclusivity vests therein with regard to clothing in the name of NAIDU HALL. Accordingly, no one is entitled to use the expression NAIDU HALL either for goods or as a service mark except with the plaintiff's express permission. It is relevant to note that the goods sold and services rendered by the plaintiff in the above regard ab initio were and are called for and known and invoiced as NAIDU HALL alone. As such, the mark NAIDU HALL and said goods more particularly 8/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 female intimate clothing has become inseparable and come to be symbolic of the plaintiff.
2.7. The reputation of the plaintiff's Trade Mark is so vast that the Trade Marks comprising NAIDU HALL as the essential feature is perceived and identified by the consumers and members of trade as the plaintiff's marks alone and any other services/goods of the same kind or description bearing the said trade mark and/or identical or deceptively similar trade mark thereof would be deemed to be associated/originating from/with the plaintiff by the purchasing public and members of the trade. The services and goods of the plaintiff in this connection are called for and commercially rendered/sold as NAIDU HALL, apart from the registration held by them.
2.8. The plaintiff submits that, it had come to their notice that the defendant is using the plaintiff's Trade Mark NAIDUHALL 1939 and DEVICE (hereinafter referred to as the impugned marks) for rendering of 9/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 same allied cognate goods viz. female intimate wears (hereinafter referred to as the impugned goods). The plaintiff's trade mark NAIDU HALL is entirely imitated in the alleged trade mark and the defendant has brazenly copied the plaintiffs Trade Mark NAIDU HALL. The expression NAIDU HALL in the mark and logo only accentuates their mark NAIDU HALL. It is evident that the defendant's unauthorized use of the plaintiff's NAIDU HALL Trade mark on the defendant's label and otherwise is to malafidely lead consumers to believe that the defendant's products and/or services are associated with, endorsed by and otherwise affiliated with the plaintiff.
2.9. The plaintiff further discovered that the defendant is using the impugned marks and have been promoting the same through various online portals. They have a ware house at Adyar Chennai from where trap purchases were made and trap bills obtained. It revealed startling fact that the defendant is marketing goods under the Trade Name 'Naidu Hall 1939, A Moham Venture' and on contacting through web Site, the prospective 10/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 purchaser was directed to go over to the Ware House and there sale is effected and payments are received through credit Cards. Very surprisingly the defendant also has registered GST. The trap Bills are annexed as plaint documents. Right in Chennai, the defendant is surreptitiously and stealthily operating and the wilful adoption in having a retail show room at Bangalore and ware house at Chennai manifest the wrong and illegal intentions. There is every reason that the members of trade and public would get confused by use of such identical and similar trade mark. The plaintiff's Trade Mark NAIDU HALL is fully imitated by the defendant in the impugned marks.
2.10. The manner of use, methods adopted by defendant and slavish reproduction of the plaintiff's well reputed NAIDU HALL Trade Mark, are clearly suggestive of defendant's attempts to make illegitimate profits at the expense of the plaintiff's reputation and goodwill. The defendant's use of NAIDUHALL 1939 and device in association with their goods/services 11/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 are inherently dishonest, in bad faith without just cause.
2.11. The defendant is quite aware of the plaintiffs Trade Mark and reputation of their renowned NAIDU HALL mark. The defendant accordingly adopted the impugned Trade Mark and are marketing the identical goods under the impugned Trade Mark with deliberate and dishonest intention of passing off the defendant goods as and for the well- known goods of the plaintiff. The confusion caused by such offending use of the plaintiff's Trade Mark by the defendant needs no emphasis. The confusion is so profound that wrong notions and association of defendant's impugned goods and impugned Trade Marks with the plaintiff's goods and Trade Mark are well established resulting in buyers thinking that the goods sold by the defendant under the impugned marks, are those emanating from the plaintiff or that the plaintiff has licensed its use or has opened a branch there and consequently buying defendant goods under the impression of buying plaintiff's goods. It is relevant to note that the goods 12/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 sold by the defendant are identical to that of plaintiff. The said act committed by the defendant falls squarely under infringement and passing off.
2.12. The plaintiff seriously object to adoption and/or use of the impugned marks by the defendant for similar goods. The defendant's actions are bound to cause confusion that the impugned goods are associated and/or connected with, if not, sponsored by, approved by or otherwise affiliated with the plaintiff's. The plaintiff submits that this has the effect of the defendant making unauthorized profits from as well as damaging and diluting the goodwill and reputation of the plaintiff's NAIDU HALL mark. The defendant's, adoption and use of the impugned mark are detrimental to the distinctive character and repute of the plaintiff's registered Trade mark, which have a public repute in India. The adoption and use of the impugned marks in respect of defendant's impugned goods is not a matter of coincidence, but an extremely calculated and blatantly 13/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 dishonest act actuated with unjust cause, bad faith to ride upon the unsurpassed goodwill enjoyed by the plaintiff's over their popular Trade Mark.
2.13. The plaintiff submits that the defendant is also liable to account for the profits that have been made as a result of above said illegal actions and also to pay damages to the plaintiff. The very act of the defendant in pushing the sales with the Trade Mark of the plaintiff in the same geographical region using deceptively similar Trade Mark is proof of the element of cheating involved.
2.14. Further, the plaintiff is entitled to delivery up for destruction of all offending materials bearing the impugned mark "NAIDU HALL" along with artwork and trade dress which are identical with and/or deceptively similar to that of the plaintiff's trade mark/label/package "NAIDU HALL". The plaintiff further entitled to an account of unlawful profits made by the defendant through the illegitimate use of NAIDU HALL trade mark in 14/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 respect of goods/services.
2.15. In order to prevent the defendant from making further infringements, the plaintiff was constrained to send a legal notice dated 10.10.2019 to the defendant, calling on them to cease and desist the use of the Trade Mark NAIDU HALL on their goods/services. To this, the defendant preferred a innocuous reply on 22.10.2019 making vague averments which do not qualify as an adequate reply to the cease and desist Notice. Therefore the plaintiff has no other remedy other than to approach this Court.
3. The defendant has filed the written statement denying the allegations made in the plaint. The preliminary objections of the defendant are that (i) Delay Laches and Acquiescence (ii) Suppression of Material Fact (iii) Suit is bad for Non-Joinder of necessary parties.
3.1. Insofar as Delay Laches and Acquiescence are concerned, it is submitted that the defendant has been in the business of selling ladies 15/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 foundation garments since 2018 October. According to the plaint averments, the plaintiff is aware of the defendant's use of the mark "Naidu Hall" as early as 2019 and had also caused a cease and desist notice dated 10.10.2019. The defendant has responded to the said notice by a reply notice dated 22.10.2019, bringing out in detail the rights of the defendant. There is no reason whatsoever given by the plaintiff for delay in more than a year in filing the present suit. The plaintiff had knowledge of the defendant's business. More so, the plaintiff is also aware of the business arrangement between the defendant and Mr.Arvind Ramaswamy, one of the legal heirs of late Mr.M.G.Naidu, founder of NAIDU HALL. Further, the defendant, Mr.Sujay Kanth is also the extended family member of Mr.Arvind Ramaswamy. Hence, being in the same family, the plaintiff ought to be and in fact aware of the business arrangement between the defendant and Mr.Arvind Ramaswamy. As admitted by the plaintiff, they are aware of the defendant's business in 2019 and allowed/permitted the 16/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 defendant to carry on business and has in fact acquiesced use of the mark "NAIDU HALL" by the defendant.
3.2. Insfoar as Suppression of Material Fact is concerned, the plaintiff ought to be and well aware of the business arrangement the defendant has with Mr.Arvind Ramaswamy, however, deliberately suppressed the material fact and has filed the present suit as though the defendant is a third party using the mark "Naidu Hall.
3.3. Further, it is submitted that the present suit is bad for non- joinder of necessary parties. Mr.Arvind Ramaswamy who is one of the legal heirs of late Mr.M.G.Naidu and from whom the defendant derives title, has not been made as a party to the present suit. The said Mr.Arvind Ramaswamy has assigned the mark "Naidu Hall" and other marks to and in favour of the defendant herein. Thus, making it necessary to implead Mr.Arvind Ramaswamy as a party to the suit for proper adjudication. Without impleading Mr.Arvind Ramaswamy as a party to the suit, this 17/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Court cannot determine the rights of the parties herein. Thus, Mr.Arvind Ramaswamy is a proper and necessary party to the suit and the suit is bad for non-joinder of necessary party.
3.4. It is submitted that the said Mr. Arvind Ramaswamy is the son of Mr.G.Ramaswamy Naidu, who is one of the sons of Mr.M.Govindaswamy Naidu. The plaintiff's partner Mr.G.Venugopal is also one of the sons of Mr.M.Govindaswamy Naidu. By way of family arrangement, the legal heirs of Mr.G.Ramaswamy and Mr.G.Venugopal acquired equal right and title over the mark "Naidu Hall" and its other formative marks with demarcation in line of business activity. For more than several decades, the said two brothers mainly, Mr.Ramaswamy and Mr.Venugopal had been trading jointly and severally under the mark "Naidu Hall". Further, from the year 2005, there had been two different entities namely one belonging to Mr.Arvind Ramaswamy and one belonging to Mr.Venugopal, running without any confusion or deception in 18/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 the minds of the trade and public as to their origin. The defendant has stepped into the shoes of Mr.Arvind Ramaswamy by way of a business transfer agreement thereby taking over the business venture as well as acquiring right and title over the mark "Naidu Hall" and other marks. Thus, there cannot be any deception or confusion in the minds of trade and public. More so, the defendant has been using the mark Naidu Hall along with the suffix "A Moham Ventures" which clearly distinguishes the goods and services of the defendant and plaintiff herein. Mr.Sujay Kanth, is authorized by the Board of Directors and is a major shareholder of the defendant, a closely held Private Limited Company and he is the S/o.Mrs.Hamsa Moham Kanth, who is none other than elder sister of Mr.G.Ramaswamy's wife.
3.5. The said Mr. Arvind Ramaswamy due to personal reasons had th entered into a Business Transfer Agreement dated 6 September 2018 with the defendant herein whereby the trademark "NAIDU HALL", the device 19/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 of vermilion within a rounded device along with other marks where unconditionally, absolutely and irrevocably assigned to and in favor the defendant herein. The defendant herein is the subsequent proprietor of the mark "NAIDU HALL" and the said device mark and has absolute right over the same having acquired the said mark for valuable consideration. Further, the defendant has also taken over the business unit of the said Mr.Arvind Ramaswamy, which fact is well within the knowledge of plaintiff.
3.6. The defendant has been running its business under the name and style of "NAIDUHALL 1939 A Moham Venture" since September 2018 till date. The defendant has more than 400 to 500 multi-brand outlets that sell ladies foundation garments under the mark "NAIDUHALL 1939 A Moham Ventre" all over Tamil Nadu and parts of Andhra Pradesh. The defendant also has franchise stores in both Tamil Nadu and Andhra Pradesh and has more than 100 employees. The very use of the mark "NAIDUHALL 1939 20/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 A Moham Venture", cannot be termed to be infringement or passing off, as the defendant is also a rightful owner of the said mark. It is pertinent to note that the defendant is dealing only with ladies foundation garment under the mark "NAIDUHALL 1939 A Moham Venture".
3.7. The defendant is using the mark "NAIDIU HALL" along with the prefix of a device mark with vermilion within a circle and the suffix "A Moham Ventures". The plaintiff is using the mark "NAIDU HALL" with the prefix "VNH" and "NH" with or without a rounded device. Further, the colour scheme, getup and layout of both the marks are completely different and distinct and the same distinguishes the origin of both the marks. Hence, there is no possibility of deception or confusion in the minds of trade and public.
3.8. It is an admitted fact that the Trade name/mark "NAIDU HALL" was conceived and adopted by late Mr.M.Govindaswamy Naidu. The said mark was nurtured and developed by the two sons of late 21/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 M.Govindaswamy Naidu viz., Late Mr.Ramasamy (Mr.Arvind Ramaswamy's father) and his brother Mr.Venugopal, the plaintiff's representative in the present suit. After the demise of late M.Govindaswamy Naidu, the family business NAIDU HALL was taken care of by late Mr.Ramasamy (Mr. Arvind Ramaswamy's father) and Mr.Venugopal/plaintiff. Subsequently, their respective sons namely Mr.Arvind Ramaswamy and his cousin late Mr.Navin were made as partners in the said family business and the business and mark NAIDU HALL attained pinnacle of reputation and goodwill by virtue of the hard work and contribution from all the family members. Thus, the mark NAIDU HALL had always remained to be the family property jointly and severally owned and enjoyed by all the family members.
3.9. It is pertinent to note that even as per the partnership deed entered into between the family members as of the year 1996, it is specifically mentioned that both that Mr.Ramaswamy (Mr. Arvind 22/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Ramaswamy's father) and Mr. Venugopal/Plaintiff can use the mark NAIDU HALL separately even in respect of rival businesses. Thus, both have been jointly running the business NAIDU HALL the family Store as well as running a separate partnership firm by name NAIDU HALL the Family Shop and NAIDU HALL. Likewise, the plaintiff was also running a separate partnership firm by name NAIDU HALL the FAMILY Store. Thus, the mark NAIDU HALL has always been and continuous to be the common property of both the families. After the demise of Mr.Ramaswamy in the year 2001, his son Mr.Arvind Ramaswamy had inherited his father's business together with all the right and title over the mark "NAIDU HALL".
3.10. After the demise of Mr. Ramaswamy, difference of opinion arose between the two families, settlement talks which took place in the year 2005 and came to be recorded as a Memorandum of Understanding (MOU) dated 25th January 2005 between Lrs' of Mr.Ramaswamy i.e. his 23/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 wife, son Mr.Arvind Ramaswamy & daughter and plaintiff Mr.Venugopal. The said MoU rightly recognizes the equal right over the mark "NAIDU HALL". Hence, neither of the two families can claim sole monopoly right over the mark "NAIDU HALL" and at the same time both the two families are equally entitled to the mark "NAIDU HALL" and its other formative marks.
3.11. It is submitted that contrary to above MoU between two families, the plaintiff's partner Mr.Venugopal, had clandestinely applied for and obtained registration of the mark with prefixes and suffixes "Naidu Hall" way back in 2012 without the knowledge of late Mr.Ramaswamy's family, after his demise in 2001, claiming as an exclusive proprietor of Trade name/mark "Naidu Hall". Later, when some of the applications filed by the plaintiff came to the knowledge of Mr.Arvind Ramaswamy son of late Mr.Ramaswamy, he opposed the same and the oppositions are pending. Hence, it is categorically denied the plaintiff's claim of exclusive 24/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 proprietary over the Trade name/mark "Naidu Hall". Similarly, the plaintiff Mr.Venugopal has also opposed the trademark applications filed by Mr.Arvind and the same are also pending. It is also pertinent to note that the plaintiff has acted in utter disregard to the MoU entered between family members in the year 2005, wherein the plaintiff is estopped from selling ladies foundation garment and ladies textile goods on retail basis.
3.12. It is submitted that Mr.Arvind Ramaswamy has been using the Trade name/mark "Naidu Hall" independently in his business styled as "Naihaa" as "a unit of Naidu Hall", since 2005 onwards pursuant to the above family MoU, which enhanced the Trade name/mark "Naidu Hall"
under "Naihaa" as "a unit of Naidu Hall". The plaintiff's business got shadowed under "Naihaa"s reputation in the market, had its own niche of customers, which had created a public mindset that "Naihaa" is "Naidu Hall" and "Naidu Hall" is "Naihaa", but the Plaintiff's "Naidu Hall Family Store" had no relevance in the market. Thus, the Plaintiff's business made 25/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 indirect gains under the "Naihaa's reputation in the market considered as premium products.
3.13. It is submitted that on 5th October 2006, the partnership firm Naidu Hall - The Woman Exclusives, had assigned and transferred the trade mark NAIDU HALL along with other marks to and in favour of the family run company M/s.Ramasamy Holdings P.Ltd. Thus, a slew of marks such as Naidu Hall, Teens, Inner Strengths, Mermaid among other marks owned by the said partnership came to be vested with the said company. Later, the said company assigned and transferred all the said marks to and in favour of Mr.Arvind Ramaswamy by way of an assignment deed dated 25th August 2008/28th December 2006. Thus, Mr.Arvind Ramaswamy became to be the absolute owner/ proprietor of the said marks.
3.14. While being so, over a period of time, due to unforeseen circumstances, Mr.Arvind Ramaswamy son of late Mr.Ramaswamy suffered huge loss in the business and became bankrupt with cases 26/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 multiplying against him, thus couldn't sustain the business anymore and was losing one by one. As even his survival became difficult as no one to help him out much less said about his uncle Mr.Venogopal/Plaintiff who bought the immovable properties of Mr.Arvind Ramaswamy in public auction by his bankers, with no other options at this point of time, he was desperately looking for some help financially or otherwise to sustain his business with Trade name/mark "Naidu Hall" with no other physical assets.
3.15. It is submitted that, Mr. Arvind Ramaswamy was not in a position to run the business and was in the lookout for investors. Mr.Arvind Ramaswamy approached the defendant Mr.Sujay Kanth sometime in 2018, requested him to help him to bail out from his financial constrains. Considering their relationship and the state in which Mr.Arvind Ramaswamy was and his in-dept knowledge and intellect in "Naidu Hall"
products, the defendant Mr.Sujay Kanth being a major shareholder of the defendant, a closely held Private Limited Company herein, agreed to 27/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 invest, to have its continuity and took over the ongoing business more particularly "Naidu Hall" Mylapore Branch/Unit, which culminated into entering into Business Transfer Agreement in the year 2018. The defendant Mr.Sujay Kanth agreed to help Mr.Arvind Ramaswamy by investing in his business with the condition that Mr.Arvind Ramaswamy would be taking complete and good care of the business as he being the person skilled in the art. Believing his words, the defendant Mr.Sujay Kanth had invested huge sums of his hard earned money and took Mr.Arvind Ramaswamy as shareholder in the defendant Company and was also made the CEO (Chief Executive Officer) of the defendant's company and was at the helm of affairs of the company. Mr.Arvind Ramasamy, in the capacity as the CEO of the defendant's company, had signed franchise agreements and rental agreements on behalf of the defendant company.
3.16. Thus, the defendant stepped into the shoes of Mr.Arvind Ramaswamy with him being the kingpin managing the entire business. It is 28/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 further stated that in order to do collective business in "Naidu Hall"
products by way of a joint venture, the defendant Mr.Sujay Kanth father's name "Moham" with the word "Ventures" suffixed as "A Moham Ventures"
is used in the defendant's business only with a bonafide intention to distinguish the goods of the defendant's from that of the plaintiff's and not to cause any deception in the minds of trade and public. Hence, the plaintiff's partner Mr.Venugopal pleading innocence or ignorance of the persons behind the defendant's business as established from its name "Moham", is nothing but mischief, misrepresentation to mislead this Court. ` 3.17. The defendant has invested around Rs.10 Crores in the business, besides in its franchisees. The defendant Mr.Sujay Kanth have invested solely on the reason that Mr.Arvind Ramaswamy supports as a CEO (Chief Executive Officer) who is well aware of the technical aspects of the ladies foundation garments business.
3.18. The plaintiff knowingly and deliberately suppressed the above 29/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 facts in the suit more so to claim exclusive proprietary right over the Trade name/mark "Naidu Hall" and had wilfully not made Mr.Arvind Ramaswamy as a party to the suit with a malafide intention to mislead this Court. It is reiterated that the suit cannot be adjudged without impleading Mr.Arvind Ramaswamy as a party and the relief sought for also cannot be granted without hearing him.
3.19. With regard to the registrations obtained by the plaintiff, it is submitted that the defendant is the subsequent proprietor of the trademark "Naidu Hall" deriving title from Mr.Arvind Ramaswamy and is entitled to use the same. The said registration listed out by the plaintiff does not in any manner affect the rights and interest of the defendant over the mark "Naidu Hall", more specifically in the device mark NAIDUHALL 1939 A Moham Venutre.
3.20. It is specifically denied that the trademark "Naidu Hall" is perceived and identified by the consumers and members of trade as the 30/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 mark belonging to the plaintiff alone. At least since the year 2005 there had been two branches under the mark Naidu Hall namely one run by Mr.Venugopal and his family and the other by Mr.Arvind Ramaswamy and his family. The said two entities were in existence together without any deception or confusion in the minds of the trade and public. The defendant has acquired right and title over the mark "Naidu Hall" and other marks along with the entire business venture and continued with ongoing business more particularly "Naidu Hall" Mylapore Branch/Unit, since 2018. Thus, there cannot be any confusion as to the source of origin among trade and public. Further, the defendant in order to make a clear distinction has specifically included the words "A Moham Venture" and is using the mark "Naidu Hall" only in conjunction with the words "A Moham Venutre" to inform the consuming public about the origin.
3.21. It is also denied that the defendant has copied the plaintiff's mark as alleged and the defendant's use of the mark "Naidu Hall" is 31/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 unauthorized and misleads consumers concerning its origin. It is submitted that the plaintiff is well aware of the business arrangement that the defendant has with Mr.Arvind Ramaswamy. However, with a malafide intention of snatching away an order from this Court, has concealed and suppressed material facts from this Court. The plaintiff has not come to this Court with clean hands. Having made a trap purchase from the warehouse of the defendant, the plaintiff would have also investigated the origin and known the person behind the said venture. In the present case, the plaintiff ought to be and is well aware of the defendant and Mr.Arvind Ramaswamy's association and it is denied that there is any reason for confusion among the members of trade and public.
3.22. Further, it is denied that the manner of use, methods adopted by the defendant is a slavish reproduction of the plaintiff's mark and is suggestive of the defendant's attempt to make illegitimate profit. It is reiterated that the defendant is legally entitled to use the mark "Naidu 32/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Hall" and is also the proprietor of the mark "Naidu Hall". The defendant is not using the mark "Naidu Hall" with deliberate and dishonest intention of passing off the plaintiff's goods as alleged by the plaintiff. It is submitted that the defendant does not pass of their goods and is using the mark "Naidu Hall" since they are legally entitled to it.
3.23. It is denied that the use of the mark "Naidu Hall" by the defendant amounts to infringement and passing off as alleged. It is also denied that the defendant is liable for accounts for the profits made from the use of the mark "Naidu Hall". It is also denied that use of the mark "Naidu Hall" by the defendant amounts to cheating and the plaintiff is entitled to delivery up for destruction of all the offending material as alleged and accounts to purported unlawful profits made by the defendant. It is reiterated that the defendant is entitled to use the mark "Naidu Hall"
by virtue of irrevocable assignment made by Mr.Arvind Ramaswamy who is also a proprietor of the mark "Naidu Hall". 33/97
https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 3.24. It is reiterated that the suit is hit by delay, laches and acquiescence. Even according to the plaintiff, they are aware of the defendant's use of the mark "Naidu Hall" since 2019. There is no reason whatsoever attributed to the delay in filing the suit after such inordinate delay. The plaintiff has conveniently mislead this Court by stating that the defendant has sent an innocuous reply by making vague averments when the defendant has brought the fact that they have derived the title from one of the owners of the mark "Naidu Hall" and is legally entitled to use the same. It is denied that the plaintiff has prima facie case in their favour and the balance of convenience and irreparable loss is in favour of the defendant. On the other hand, it is submitted that it is the defendant, who has established prima facie case, as the mark NAIDU ALL among other marks have been assigned to and in favour of the defendant. The plaintiff has deliberately misled this Court and is guilty of suppression of material fact. It is therefore prayed that this Court may dismiss this suit. 34/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020
4. Upon considering the pleadings, the following issues were framed by this Court on 20.04.2023.
1. Whether the defendant has copied the plaintiff's trademark "NAIDU HALL" and illegally used it for its business and thereby committed the act of infringement?
2. Whether the plaintiff is the sole exclusive proprietor of the trademark "NAIDU HALL"?
3. Whether the plaintiff has acquiesced the use of mark "Naidu Hall" by the defendant since the year 2018?
4. Whether the added matter in the mark namely "A Moham Venture" makes the mark distinct and distinguishable from the goods and services of the plaintiff?
5. Whether the plaintiff is entitled to trade in women's and children's garments and lingeries on a retail basis as per the family MOU?
35/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020
6. Whether other reliefs the plaintiffs are entitled to?
5. Subsequently, considering the rival submission of the counsel for either side, the following two issues were framed as additional issue Nos.7 and 8 on 27.04.2024.
7. Whether the suit is bad for non-joinder of necessary party?
8. Whether the plaintiff has challenged the rights of the defendant's predecessor in title?
6. After framing of issues, during trial, on the side of the plaintiff, one witness was examined as P.W.1 and 21 documents were marked as Exs.P1 to P.21. On the side of the defendant one witness was examined as D.W.1 and 19 documents were marked as Ex.D.1 to Ex.D19.
7. The learned counsel for the plaintiff submitted that the trademark "NAIDU HALL" was founded by late Mr.M.G.Naidu in the year 1939. 36/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Later on, with the growth of steady clientele, he expanded the business and the trademark Naidu Hall also became popular steadily. The plaintiff uses the trademark Naidu Hall in various iterations for clothing, lingerie etc. for products and retail sales of such products in classes 24, 25, 35 and 40. The trademark NAIDU HALL is well known and recognized across trade and public as that of the plaintiff and none else. The plaintiff became aware of the defendant's use of the mark Naidu Hall 1939 and a device mark at Adyar and marketing goods at Chennai and Bangalore. The defendant is also using similar domain names in other social media sites. The defendant does not have any right over the trademark NAIDU HALL and therefore, he cannot use the identical trademark NAIDU HALL for identical goods and services.
7.1. Late M.G.Naidu had 3 sons namely Mr.Venugopal (the plaintiff's partner), Mr.Ramaswamy and Mr.Sugumar of whom Mr.Sugumar passed away early without any legal heirs. The plaintiff is the 37/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 partnership firm who continued the family business. The plaintiff is the registered proprietor of the trade mark NAIDU HALL and its registered trademarks are marked as Ex.P.17. By virtue of Section 28 of the Trademarks Act, 1999, the plaintiff is the exclusive proprietor of the trademarks and is entitled to prevent others from using any identical or deceptively similar trademark for identical or similar goods. The defendant claims that they have a Business Transfer Agreement from Mr.Aravind Ramaswamy and based on the same, has claimed right over the trademark NAIDU HALL. However, not a single trademark registration has been filed by them to show their right over the trademark NAIDU HALL. Further the defendant has filed documents to show that the trademark under No.1393584 in Class 35 is opposed by the plaintiff. Therefore, there is no registered trademark based on which the defendant could claim any right.
7.2.The learned counsel submitted that as stated above the plaintiff 38/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 is the proprietor of the trademark NAIDU HALL. There is no pleading or suggestion that the plaintiff is not entitled to use the trademark NAIDU HALL at all by the defendant. The defendant has on the other hand taken a defence that they have the right to use the trademark NAIDU HALL/NAIDU HALL 1939 a Moham Ventures' and claims that such right was accrued by a Business Transfer Agreement with Mr.Aravind Ramaswamy. Mr.Aravind Ramaswamy is the son of Late Mr.G.Ramaswamy, son of Late M.G.Naidu. According to the defendant, Mr.Sujay Kanth, who is the Director of defendant company, is the cousin of Mr.Aravind Ramaswamy on the mother's side. Mr.Aravind Ramaswamy's mother and Mr.Sujay Kanth's mother are sisters. Therefore, he claims that they are family members. This is a devious method of the defendant to somehow usurp the trademark NAIDU HALL. In the MoU (Ex.D2) entered into between the plaintiff and the family of Late Sri.G.Ramaswamy, there is a specific Clause which states that; 39/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020
22. The parties agree that the brand name "NAIDU HALL" shall be utilised by them for their exclusive business activities and shall not be assigned for exploitation by any third party either directly or indirectly and if any of the parties desiring to transfer/sell, it shall be offered to the other. Therefore, apparently, the transfer of rights to a third party, a private limited company, is clearly impermissible under Ex.D2/MoU and hence, the defendant cannot claim any right over the trademarks including NAIDU HALL.
7.3. The learned counsel for the plaintiff further submitted that according to the defendant, the flow of rights from the legal heirs of Late Sri.Ramaswamy is by the following documents;
a. There was a family arrangement between 40/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Mr.Venugopal and the family members of the Late Mr.Ramaswamy on 25.01.2005 (Ex.D2).
b. By an assignment dated 05.10.2006, the partnership firm, Naidu Hall-Woman Exclusive assigned the rights to Ramaswamy Holdings Private Limited (Not marked).
c. On 25th August 2008/28th December 2006, Ramaswamy Holdings Private Limited assigned these rights to Mr.Aravind Ramaswamy (Ex.D5).
d. On 06.09.2018, by a business Transfer Agreement, Mr.Aravind Ramaswamy assigned the rights to the defendant (Ex.D13).
However, most curiously, one of the 4 documents, is not marked in evidence and thus the flow of rights as claimed by the defendant is not 41/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 proved. The cross examination of D.W.1 to question Nos,33, 34, 35 and 36 would prove the same.
7.4. Further, the deed alleged to have transferred the rights from Ramaswamy Holdings Pvt. Ltd. to Aravind Ramaswamy has two different dates. It is rather impossible to have the same documents executed on two different dates and therefore, it is obvious that one of the date is false. During cross examination, while answering to the question Nos.17, 18 and 19, D.W.1 stated that it should be a typographical error and the Ramaswamy Holdings Private Limited transferred the trademarks to Mr.Aravind Ramaswamy on 25.08.2008 and that he is noticing this typographical error for the first time, which clearly shows that the said statements are false. Further, the assignment deed/Ex.D5 is dated 25.08.2008, which is about 10 days later than the affidavit sworn by Mr.Ramaswamy before the trademarks Registry. This demonstrably shows that the document Ex.D5 is fabricated one and hence, deserved to be 42/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 disregarded. Even the statements made in Ex.D9, Ex.D10 and Ex.D11, will prove that the defendant has played fraud on the Trademarks Office and also before this Court. Though the defendant in their written statement has stated that they have invested about Rs.10 Crores in the business, D.W.1 in his cross examination to the question No.45, has admitted that there are no document filed to prove the same. D.W.1 further stated to question Nos.4, 5, 6, 37, and 38 that Mr.Aravind Ramaswamy was declared as defaulter. These discrepancies show that the defendant has merely utilized the misfortune of Mr.Aravind Ramaswamy and has tried to illegally usurp the trademarks NAIDU HALL and others and there are no proper documents tracing the title claimed by the defendant.
7.5. The learned counsel further submitted that as regards to the issue of acquiescence, as stated by the defendant in the written statement, the plaintiff became aware of the defendant's use of the trademark NAIDU HALL in the year 2019. The plaintiff issued a legal notice to the defendant 43/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 on 10.10.2019 (Ex.P.15) which was replied on 22.10.2019. The present suit was filed on or about September 2020 immediately after COVID -19 lockdowns were lifted for the first time. Therefore, there is no question of any delay much less acquiescence against the defendant by the plaintiff. The cross examination of D.W.1 on this point to question Nos.10, 11 and 12 would prove the same.
7.6. Further the issue as to whether the added matter in the mark namely "A Moham Venture" makes the mark distinct and distinguishable from the goods and services of the plaintiff is concerned, the trademarks have to be taken as a whole. The plaintiff's predecessors have been using the trademark NAIDU HALL since 1939 which is admitted by the defendant. Therefore, the trademark NAIDU HALL or NAIDU HALL 1939 cannot be used by the defendant. Once the defendant cannot use the trademark NAIDU HALL 1939 itself, the issue as to added matter, is redundant in the instant case. Further, by stating that the added matter has 44/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 to be looked into, the defendant has explicitly admitted that the trademarks are identical look. Most importantly, the defendant has no title to the trademark at all as stated above and hence, they cannot add their name to the plaintiff's well-known trademark NAIDU HALL which is clearly infringing the plaintiff's trademark.
7.7. Insofar as the issue as to whether the plaintiff is entitled to women's and children's garments and lingerie on a retail basis as per the family MoU, is concerned, the said issue cannot be agitated by the defendant at all because, the defendant is not the party to the family MoU nor is he a successor to the said MoU as stated above. Secondly, there is no counter claim by the defendant against any violation of the terms of the MoU nor can he have one in the light of the above facts. Therefore, the said issue may also be decided against the defendant and in favour of the plaintiff.
7.8. As stated above, in the instant case, the defendant is using the 45/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 trademark NAIDU HALL 1939 which is identical to that of the plaintiff's trademark NAIDU HALL and the goods are also identical. Therefore, by virtue of Section 29(3) of the Trade Marks Act, the Court shall presume confusion between the two trademarks and a judgment and decree may be passed in terms of the prayers in the plaint.
8. The learned counsel for the defendant submitted that the defendant started using the mark since 2018 and has been using the same continuously and extensively since then. The mark NAIDU HALL has been assigned to and in favour of the defendant by Mr.Aravind Ramaswamy vide a Business Transfer Agreement (BTA) dated 06.09.2018 (Ex.D13). By the said BTA, the defendant herein took over the on-going business of Mr.Aravind Ramaswamy and has in fact stepped into the shoes of Mr.Aravind Ramaswamy and had carried out the business NAIDU HALL in respect of undergarments since 2018. The mark NAIDU HALL was initially owned by one Mr.M.G. Naidu. After his demise, the marks 46/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 were transmitted to his sons Mr.Ramaswamy, Mr.Venugopal and Mr.Sukumar. After the demise of Mr.Sukumar, the mark was jointly owned, enjoyed and possessed by Mr.Ramaswamy and Mr.Venugopal. After the demise of Mr.Ramaswamy, the mark NAIDU HALL was transmitted to Mr.Aravind Ramaswamy. By way of family arrangement, MoU dated 20.01.2005 (Ex.D2), was entered into between the LRs. of late Mr.Ramaswamy, i.e. his wife, his son Mr.Aravind Ramaswamy, his daughter and the partner of the plaintiff Mr.Venugopal. Both Mr.Venugopal and Aravind Ramaswamy had equal rights over the mark NAIDU HALL. The defendant after going through all the documents and carrying out due diligence, had entered into a BTA to carry on the business of NAIDU HALL whereby, the pending application for the mark NAIDU HALL under No.1393584 (Ex.D4) and the device of vermillion under application No.1342469 (Ex.D3) were assigned to and in favour of the defendant herein apart from other marks. Thus, according to the BTA, the defendant 47/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 took over the business running in the name and style of NAIDU HALL at 66, Royapettah High Road, Mylapore, Chennai - 600 004. The defendant has been using the mark NAIDU HALL along with the words 'A MOHAM VENTURE' written prominently above the word NAIDU HALL and the device of vermillion in a yellow background (Ex.P.21). Since 2015, Mr.Aravind has been continuously and extensively using the mark NAIDU HALL and has opened up several franchisees/outlets across the length and breadth of the city. As per the BTA entered into between Mr.Aravind, Mr.Aravind was the CEO of the defendant company until December 2020, when an ex-parte order of injunction. The said Mr.Aravind was in charge of the business right from day one after BTA, in fact he was the one who entered into several rental agreements, franchisee agreements for and on behalf of the company and in fact inaugurated several outlets both company owned and franchisee of the defendant.
8.1. The learned counsel for the defendant submitted that insofar as 48/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 the issues No.1 as to whether the defendant has copied the plaintiff's trademark "NAIDU HALL" and illegally used it for its business and thereby committed the act of infringement, is concerned, as stated above, after the demise of Mr.Ramaswamy, the mark NAIDU HALL was transmitted to Mr.Aravind Ramaswamy. By way of family arrangement, MoU dated 20.01.2005 (Ex.D2), was entered into between the LRs. of late Mr.Ramaswamy, i.e. his wife, his son Mr.Aravind Ramaswamy, his daughter and the partner of the plaintiff Mr.Venugopal. Both Mr.Venugopal and Aravind Ramaswamy had equal rights over the mark NAIDU HALL. The said Aravind Ramaswamy had filed trademark application for the mark NAIDU HALL word per se under application No.1393584 (EX.D4) and for Thilagam device under No.1342469 (EX.D3) in the name of NAIDU HALL THE WOMEN EXCLUSIVE PARTNERSHIP FIRM. The said mark was assigned by the said partnership firm to and in favour of M/S.Ramasamy Holdings Pvt. Ltd. on 05.10.2006. Thereafter, on 49/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 25.08.2008, the said Ramswamy Holdings, assigned the mark NAIDU HALL to and in favour of Mr.Aravind Ramaswamy (EX.D5). Thus, Mr.Aravind Ramaswamy was the proprietor of the mark NAIDU HALL under pending application No.1393584. In 2005, by way of a family arrangement deed/MOU, both Mr.Aravind Ramaswamy and Venugopal had equal rights over the mark NAIDU HALL. Upon Aravind Ramaswamy facing several financial crunches and unable to carry on this business, he entered into a Business Transfer Agreement (BTA) (EX.D13) dated 06.09.2018 wherein the ongoing business of Naidu Hall as carried on by the said Aravind Ramaswamy was taken over by the defendant herein and the trademark NAIDU HALL, the device of Thilagam and several other trademarks were assigned to and in favour of the defendant herein. Thus, the defendant has stepped into the shoes of its predecessor, namely Aravind Ramaswamy and the defendant is a rightful owner of the mark NAIDU HALL. Thus, the present suit to restrain the defendant from using the mark 50/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 NAIDU HALL is not maintainable.
8.2. Insofar as the issue No.2 as to whether the plaintiff is the sole exclusive proprietor of the trademark "NAIDU HALL" is concerned, it is submitted that the plaintiff claims to be the sole exclusive proprietor of the trademark NAIDU HALL. The basis for such tall claim seems to be the registration obtained by the plaintiff for the mark NAIDU HALL under several registrations which also includes registrations obtained by the partnership firm as it existed before 2005. As stated above, the mark NAIDU HALL was adopted by the late Mr.M.G Naidu. After his demise, his sons, namely Mr.Ramaswamy and Mr.Venugopal, had taken over the business and had been using the mark NAIDU HALL and after the demise of Mr.Ramaswamy, a family arrangement deed, namely MOU, dated 20.01.2005 (EX.D.2) came to be executed between Mr.Venugopal and legal heirs of late Mr.Ramaswamy wherein, it was mutually agreed that the mark NAIDU HALL will be common to both the parties and that 51/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Mr.G.Ramaswamy and his family were allowed to use ladies foundation garments on retail basis within the city of Chennai under the name and style NAIDU HALL, and the plaintiff was permitted to manufacture and sell ladies foundation garments on wholesale basis throughout India excluding 1 retail outlet at Anna Nagar, Chennai and deal with Gents and Children garments on retail basis at Chennai. The entire business of Mr.Ramaswamy was taken over by Aravind Ramaswamy along with his mother and was conducting business under the name and style of 'NAIDU HALL WOMEN'S EXCLUSIVE, NAIHAA, A UNIT OF NAIDU HALL'. The plaintiff has suppressed the material fact from this Court that Mr.Aravind Ramaswamy is also the co-owner of the mark from whom the defendant derives title. Thus, the plaintiff by no stretch of the imagination can claim to be the sole exclusive proprietor of the mark NAIDU HALL. Further, the plaintiff's witness has candidly admitted that all the 3 sons of late Mr.M.G.Naidu were trading under the name NAIDU HALL as 52/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 follows;
Q30: Can you tell the names of the business entities headed by the 3 brothers?
A: I am not aware of Mr.Sugumar's business as he had separated from other 2 brothers even before I joined the plaintiff. Mr. Ramasamy was trading under the name of Naidu Hall and sons and later under the name Naidu Hall Womens exclusive. Mr. Venugopal initially under the name Naidu Hall and Co. and later Naidu Hall Family Shop and Naidu Hall Family Store.
Q92: Can you tell, from when Mr.Aravind carried on business under the name of Naidu Hall?
A: He is part of the family and the son of Ramasamy.
Q 100: Have you filed any document to prove the transition of your right from the sons of Late M.G.Naidu to the family of Venugopal?
A:No. Thus, the plaintiff is not and cannot be the sole exclusive proprietor of the trademark NAIDU HALL.
8.3. As far as the issue No.3 as to whether the plaintiff has acquiesced the use of the mark "Naidu Hall" by the defendant since the 53/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 year 2018, is concerned, the learned counsel submitted that the defendant commenced its operations since 06.09.2018 right after the BTA was signed between the parties. Further, the name-board and the business accounts of all the outlets owned and run by Aravind Ramaswamy were renamed as NAIDU HALL A MOHAM VENTURE. The said boards were conspicuously placed in every outlet. Further, the godown also had the name-board NAIDU HALL A MOHAM VENTURE along with the Thilagam device. The plaintiff who claims to be very vigilant ought to be aware of this development. Given the fact that Mr.Venugopal had purchased the properties of Mr.Aravind Ramaswamy through Court auction including one of his stores, had always been keen on the business of Aravind Ramaswamy and ought to be aware of the defendant's use since 2018. In fact, the witness has answered that they are aware of the name Moham retail prior to filing of the suit. Further, the plaintiff had issued a legal notice to the defendant in 2019. In reply to said notice, the defendant 54/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 has clearly stated that they are the subsequent proprietors of the mark and that the mark has been assigned in their favour by its predecessor. Further, the witness has candidly admitted that after receiving the reply notice, they had carried out a search and found out that Mr.Aravind Ramaswamy has in fact assigned the mark NAIDU HALL to and in favour of the defendant. The plaintiff permitted the defendant to use the mark from October 2019 till the suit was filed sometime in November 2020 being satisfied with the reply issued by the defendant and did not precipitate the matter and acquiesced the use of the mark NAIDU HALL by the defendant. However, since the defendant was faring well in a very short span of time to stifle competition, the present suit has been filed.
8.4. Insofar as the issue No.4 as to whether the added matter in the mark namely "A Moham Venture" makes the mark distinct and distinguishable from the goods and services of the plaintiff, is concerned, the learned counsel submitted that the defendant is using the mark NAIDU 55/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 HALL along with the device of Thilagam and the words A MOHAM VENTURE written very prominently. Further, the cover scheme, getup and layout of the defendant is also completely different. This makes the mark distinct and different from the mark used by the plaintiff. Further, the defendant's predecessor is also a renowned player in the market who had been using the mark NAIDU HALL along with Thilagam device. When the trade and public could distinguish the goods and services rendered by the defendant's predecessor in title and that of the plaintiff, the same analogy flows even to the defendant herein and thus, there cannot be any deception or confusion. Further, the added matters like A MOHAM VENTURE, the Thilagam device and the unique color scheme and get up make the defendant's mark distinct and unique, thereby dispelling any doubts of deception or confusion.
8.5. Insofar as the issue No.5 as to whether the plaintiff is entitled to trade in women's and children's garments and lingerie on a retail basis as 56/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 per the family MOU, is concerned, the MOU marked as EX.D2 clearly spells out the area of business to be conducted by the plaintiff and the defendant's predecessor in title. As per clause 1(b) of the said MoU, the plaintiff is entitled to use the mark NAIDU HALL only in respect of ladies foundation garments to be marketed on a wholesale basis. The relevant paragraph is extracted as here under;
"1 (b). The parties of the second part shall make use of the brand name of "NAIDU HALL" for the manufacture and sale of ladies foundation garments to be marketed on a wholesale basis throughout India. However the parties of the second part shall be permitted to continue to manufacture and sell on retail basis ladies foundation garments through the retail outlet at C57, First main Road, Anna Nagar, Chennai".
The plaintiff witness has also admitted that they have as many as 10 stores that market lingerie on retail. Thus the very sale of lingerie on retail 57/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 business within the city of Chennai is in complete violation of the family arrangement and hence the plaintiff cannot use the same nor can claim any monopoly over the mark NAIDU HALL for retail business.
8.6. As regards issue No.7 as to whether the suit is bad for non- joinder of necessary party, the learned counsel submitted that the plaintiff is well aware of the fact that Mr.Aravind Ramaswamy, who is one of the co-owners of the mark NAIDU HALL has entered into a business agreement with the defendant and has assigned the mark NAIDU HALL among other marks to and in favour of the defendant. In spite of being aware of the said fact, the plaintiff has high handedly not made Aravind Ramaswamy as a party to the present proceeding. It is tried in law that when a suit is filed against an assignee, the assignor is also a necessary party. Thus, Aravind Ramaswamy, being the assignor, ought to have been made as a party. In the absence of any relief sought for against Aravind Ramaswamy, the plaintiff cannot have any relief sought for or executed 58/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 against the defendant. Without impleading Aravind, the present issue between the parties cannot be adjudicated and the suit fails for non-joinder of necessary party. The plaintiff's witness has admitted during cross examination that purportedly after receiving the reply from the defendant, they had investigated as to whom is the predecessor of the defendant and they have found it to be Aravind Ramaswamy. In spite of the same, Aravind Ramaswamy has not been made a party. The defendant has also made its stand very clearly that they derived title from Aravind Ramaswamyand they have stepped into the shoes of Aravind while so, it is just and necessary that Aravind Ramaswamy be made a party. However, since Aravind Ramaswamy has not been made a party, the lists between the parties cannot be decided without Aravind Ramaswamy through whom the defendant derives title. Thus, the suit is bad for non-joinder of necessary party and deserves an outright dismissal.
8.7. Insofar as the issue No.8 as to whether the plaintiff has 59/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 challenged the rights of the defendant's predecessor in title, is concerned, the learned counsel for the defendant submitted that till date the plaintiff has not challenged the right of the said Mr.Aravind Ramaswamy who is none other than the predecessor in title of the defendant. The said Aravind Ramaswamy has not been made a party to the present proceedings. There is no separate suit to the knowledge of the defendant filed by the plaintiff either challenging the rights of the said Aravind to use the mark NAIDU HALL or challenging the Business Transfer Agreement entered by the said Aravind Ramaswamy with the defendant for the assignment. As stated above, the plaintiff's witness has candidly admitted in the cross examination that Aravind Ramaswamy being the son of Ramaswamy, has rights over the mark NAIDU HALL and that they have not challenged his right. The learned counsel submitted that the plaintiff has miserably failed to prove their case and on all accord, the suit fails and therefore, the suit is liable to be dismissed with exemplary cost.
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9. Heard the learned counsel for the plaintiff and the learned counsel for the defendant and perused the materials on record.
10. On a perusal of both the pleadings, oral and documentary evidence and the submissions made by both the learned counsel, the issues are answered as follows and for the sake of convenience, the second issue is answered first.
11. ISSUE No.2: Whether the plaintiff is the sole exclusive proprietor of the trademark "NAIDU HALL"?
a. The specific case of the plaintiff is that the plaintiff is the registered proprietor of the trade mark NAIDU HALL and its registered trademarks are marked as Ex.P.17. By virtue of Section 28 of the Trademarks Act, 1999, the plaintiff is the exclusive proprietor of the trademarks and is entitled to prevent others from using any identical or deceptively similar trademark for identical or similar goods. The defendant 61/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 who claims right to use the mark NAIDU HALL/NAIDU HALL 1939 a Moham Ventures' based on a Business Transfer Agreement (BTA) alleged to have been entered with the Mr.Aravind, S/o.Ramaswamy, no trademark registration has been filed by them to show their right over the trademark NAIDU HALL. Further the documents filed by the defendant to show that the trademark under No.1393584 in Class 35 is opposed by the plaintiff and therefore, there is no registered trademark based on which the defendant could claim any right. Even the defendant has not put any suggestion and there is no pleadings in the written statement that the plaintiff is not entitled to use the trademark NAIDU HALL.
b. The specific case of the defendant is that the plaintiff claims to be the sole exclusive proprietor of the trademark NAIDU HALL. The basis for such tall claim seems to be the registration obtained by the plaintiff for the mark NAIDU HALL under several registrations which also includes registrations obtained by the partnership firm as it existed before 2005. The 62/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 mark NAIDU HALL was adopted by the late Mr.M.G Naidu. After his demise, his sons, namely Mr.Ramaswamy and Mr.Venugopal, had taken over the business and had been using the mark NAIDU HALL and after the demise of Mr.Ramaswamy, a family arrangement deed, namely MoU, dated 20.01.2005 which was marked as EX.D.2 came to be executed between Mr.Venugopal and the legal heirs of late Mr.Ramaswamy wherein, it was mutually agreed that the mark NAIDU HALL will be common to both the parties and that Mr.G.Ramaswamy and his family were allowed to use ladies foundation garments on retail basis within the city of Chennai under the name and style NAIDU HALL, and the plaintiff was permitted to manufacture and sell ladies foundation garments on wholesale basis throughout India excluding one retail outlet at Anna Nagar, Chennai and deal with Gens and Children garments on retail basis at Chennai. The entire business of Mr.Ramaswamy was taken over by his son Mr.Aravind along with his mother and continued the business under the name and style 63/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 of 'NAIDU HALL WOMEN'S EXCLUSIVE, NAIHAA, A UNIT OF NAIDU HALL'. The plaintiff has suppressed the material fact from this Court that Mr.Aravind is also the co-owner of the mark from whom the defendant derives title. Thus, the plaintiff by no stretch of the imagination can claim to be the sole exclusive proprietor of the mark NAIDU HALL. Further, the witness of the plaintiff has admitted that all the 3 sons of late Mr.M.G.Naidu were trading under the name NAIDU HALL as follows;
Q30: Can you tell the names of the business entities headed by the 3 brothers?
A: I am not aware of Mr.Sugumar's business as he had separated from other 2 brothers even before I joined the plaintiff. Mr. Ramasamy was trading under the name of Naidu Hall and sons and later under the name Naidu Hall Womens exclusive. Mr. Venugopal initially under the name Naidu Hall and Co. and later Naidu Hall Family Shop and Naidu Hall Family Store.
Q92: Can you tell, from when Mr.Aravind carried on business under the name of Naidu Hall?
A: He is part of the family and the son of Ramasamy.
64/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Q 100: Have you filed any document to prove the transition of your right from the sons of Late M.G.Naidu to the family of Venugopal?
A:No. Therefore, from the pleadings of the parties, oral and documentary evidence and Ex.D2 and also from the evidence of the plaintiff's witness, it cannot be stated that the plaintiff is the sole exclusive proprietor of the trademark NAIDU HALL.
c. The learned counsel for the plaintiff admitted the MoU/Ex.D2 between the plaintiff and the family of Late Sri.G.Ramaswamy however, contends that there is a specific clause in the said MoU as per which, the parties to the MoU should not assign the rights to third party which reads as follows:
22. The parties agree that the brand name "NAIDU HALL" shall be utilised by them for their exclusive business activities and shall not be assigned for exploitation by any third party either directly or indirectly and if any of the parties desiring to transfer/sell, it shall be offered to the other. 65/97
https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 d. Therefore, the transfer of rights to a third party, a private limited company, is clearly impermissible under Ex.D2/MoU and hence, the defendant cannot claim any right over the trademarks including NAIDU HALL.
e. However, a reading of the MoU/Ex.D2 shows that the said MoU has been entered into between the plaintiff and the family members of the defendant's predecessor in title in which, it has been clearly spelled out the area of business to be conducted by the plaintiff and the defendant's predecessor in title. As per Clause 1(a) of the MoU, the family members of the defendant's predecessor in title are entitled to use the mark NAIDU HALL in respect of ladies foundation garments on retail basis within the city of Chennai only. As per Clause 1(b) and (c) of the MoU, the plaintiff and his family are entitled to use the mark NAIDU HALL in respect of ladies foundation garments to be marketed on a wholesale basis throughout India excluding one retail outset at Chennai. The relevant paragraphs of the 66/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 MoU are extracted as hereunder:
"(a) The parties of the first part shall make use of the brand name of "NAIDU HALL" so far it relates to the manufacture and sale of ladies foundation garments on retail basis within the city of Chennai only. The parties of the First part shall be entitled to open as many retail outlets as deed fit for ladies garments within the city of Chennai in the same name or in any other name.
(b)"The parties of the second part shall make use of the brand name of "NAIDU HALL" for the manufacture and sale of ladies foundation garments to be marketed on a wholesale basis throughout India. However the parties of the second part shall be permitted to continue to manufacture and sell on retail basis ladies foundation garments through the retail outlet at C57, First main Road, Anna Nagar, Chennai".
(c) "The parties of the second part shall also be permitted to manufacture, deal and resell gents and children garments on retail basis at the present showrooms at New No.56 & 58 (Old No.94, 95), Pondy Bazaar, Chennai and at C57, First Main Road, Anna Nagar.
Chennai and/or any other place of their choice by use of NAIDU HALL brand name as retailers in their showroom"
f. As per Clause 1(a) of the MoU/Ex.D2, the defendant's predecessors in title have been given rights to use the mark NAIDU HALL 67/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 in respect of ladies foundation garments on retail basis within the city of Chennai. Therefore, it is clear that the plaintiff is not the exclusive owner of the mark NAIDU HALL.
g. Though the predecessors of the defendant have filed an application for registration, the plaintiff has repudiated the same and the same is pending before the Registrar. The notice of opposition filed by the plaintiff has been marked as Ex.D8 for which, counter statement has been filed by the defendant's predecessors in title and the same has been marked as Ex.D9.
h. Therefore, a reading of the plaint, oral and documentary evidence especially Ex.D2/MoU, it cannot be stated that the plaintiff is the exclusive owner of the trademark. Even the trademark application filed by the defendant's predecessors in title is still pending with the Registrar office and so far no final order has been passed.
i. This issue is answered accordingly.
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12. ISSUE No.3: Whether the plaintiff has acquiesced the use of mark "Naidu Hall" by the defendant since the year 2018?
a. According to the defendant, the defendant commenced its operations since 06.09.2018 right after the Business Transaction Agreement (BTA) was signed between the defendant and the said Aravind Ramaswamy S/o.Ramaswamy. Further, the name-board and the business accounts of all the outlets owned and run by Aravind Ramaswamy were renamed as 'NAIDU HALL A MOHAM VENTURE 1939'. The said boards were conspicuously placed in every outlet. Further, the godown also had the name-board 'NAIDU HALL A MOHAM VENTURE' along with the Thilagam device. The plaintiff who claims to be very vigilant ought to be aware of this development and he knows the fact that Mr.Venugopal had purchased the properties of Mr.Aravind through Court auction including one of his stores, had always been keen on the business of Aravind and ought to be aware of the defendant's use since 2018. In fact, the witness 69/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 has answered that they are aware of the name Moham retail prior to filing of the suit. Further, the plaintiff had issued a legal notice to the defendant in the year 2019. In reply to said notice, the defendant has clearly stated that they are the subsequent proprietors of the mark and that the mark has been assigned in their favour by its predecessor. Further, the witness has admitted that after receiving the reply notice, they had carried out a search and found out that Mr.Aravind Ramaswamy has in fact assigned the mark NAIDU HALL to and in favour of the defendant. The plaintiff permitted the defendant to use the mark from October 2019 till the suit was filed sometime in November 2020 being satisfied with the reply issued by the defendant and did not precipitate the matter and acquiesced the use of the mark NAIDU HALL by the defendant. However, since the defendant was faring well in a very short span of time to stifle competition, the present suit has been filed.
b. According to the plaintiff, soon after the knowledge of the 70/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 defendant's use of the trademark NAIDU HALL in the year 2019, the plaintiff issued a legal notice to the defendant on 10.10.2019 which is marked as Ex.P.15 and the defendant also sent reply on 22.10.2019. The present suit was filed on or about September 2020 immediately after COVID -19 lockdowns were lifted for the first time. Therefore, there is no question of any delay much less acquiescence against the defendant by the plaintiff. The cross examination of D.W.1 on this point to question Nos.10, 11 and 12 would prove the same.
c. It is a universally admitted fact that during 2019, there were lockdowns due to Covid Pandemic and the judicial proceedings were stayed by the Hon'ble Supreme Court. In this case, the plaintiff has clearly stated that soon after the knowledge of the defendant's use of the trademark NAIDU HALL in the year 2019, he issued a legal notice to the defendant on 10.10.2019 for which, reply has been sent by the defendant on 22.10.2019. Thereafter, after lifting of the lockdown, the present suit has 71/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 been filed in November 2020.
d. The defendant himself admitted that they entered into Business Transfer Agreement with Mr.Arvind Ramaswamy in the year 2018 whereby the trademark "Naidu Hall", the device of vermilion within a rounded device along with other marks where unconditionally, absolutely and irrevocably assigned to and in favor of the defendant herein. Therefore, there is no question of acquiescence.
e. This issue is answered accordingly.
13. ISSUE No.4: Whether the added matter in the mark namely "A Moham Venture" makes the mark distinct and distinguishable from the goods and services of the plaintiff?
a. According to the defendant the defendant is using the mark NAIDU HALL along with the device of Thilagam and the words 'A MOHAM VENTURE' written very prominently. Further, the colour scheme, getup and layout of the defendant's mark is also completely 72/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 different and that the mark used by the defendant is distinct and different from the mark of the plaintiff. Further, the defendant's predecessor is also a renowned player in the market who had been using the mark NAIDU HALL along with Thilagam device. When the trade and public could distinguish the goods and services rendered by the predecessor of the defendant in title and that of the plaintiff, the same analogy flows even to the defendant herein and thus, there cannot be any deception or confusion in the minds of the public. The added matters like 'A MOHAM VENTURE', the Thilagam device and the unique color scheme and get up, make the defendant's mark distinct and unique, thereby dispelling any doubts of deception or confusion.
b. According to the plaintiff, the trademarks have to be taken as a whole. The predecessors of the plaintiff have been using the trademark NAIDU HALL since 1939 which is admitted by the defendant. Therefore, the trademark NAIDU HALL or NAIDU HALL 1939 cannot be used by 73/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 the defendant. Once the defendant cannot use the trademark NAIDU HALL 1939 itself, the issue as to the added matter, is redundant in the instant case. Further, by stating that the added matter has to be looked into, the defendant has admitted that the trademarks are identical. Most importantly, the defendant has no title to the trademark at all and hence, they cannot add their name to the plaintiff's well-known trademark NAIDU HALL which is a clear infringement of the plaintiff's trademark.
c. Admittedly, the print out of the plaintiff's goods/services has been marked as Ex.P20. The print out of the defendant's goods/services has been marked as Ex.P21. A careful perusal of Ex.P.20 and Ex.P21 shows that except the mark name NAIDU HALL, there is no other similarity. Even the colour is different. The defendant has added a symbol of Thilagam device and a word 'A Moham Venture 1939', whereas the plaintiff's mark is NAIDU HALL FAMILY STORES.
d. Therefore, this Court finds that both the marks are not similar and 74/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 even the goods and services.
e. This issue is answered accordingly.
14. ISSUE No.5: Whether the plaintiff is entitled to trade in women's and children's garments and lingeries on a retail basis as per the family MoU?
a. The case of the defendant is that they have right to use the trademark NAIDU HALL/NAIDU HALL 1939 a Moham Ventures' and claim that such right was accrued by a Business Transfer Agreement with Mr.Aravind Ramaswamy. Aravind Ramaswamy is the son of Late Mr.G.Ramaswamy, son of Late M.G.Naidu. According to the defendant, Mr.Sujay Kanth, Director of defendant company is the sister's son of Aravind Ramasamy's mother. Therefore, he claims that they are family members.
b. According to the plaintiff, the plaintiff is the proprietor of the trademarks NAIDU HALL. The defendant has not pleaded or even put any suggestion to the plaintiff that the plaintiff is not entitled to use the 75/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 trademark NAIDU HALL. In Clause 22 of the MoU/Ex.D2 entered between the plaintiff and the family members of Late G.Ramaswamy, it is clearly stated that the brand name NAIDU HALL shall be utilized by the parties to Ex.D2 for their business activities and shall not be assigned for exploitation by any third party either directly or indirectly and if any of the parties desiring to transfer/sell, it shall be offered to the other. Therefore, apparently, the transfer of rights to a third party, a private limited company, is clearly impermissible under Ex.D2/MoU and hence, the defendant cannot claim any right over the trademarks including NAIDU HALL. Further, the defendant's flow of rights from the legal heirs of Late Sri.Ramaswamy is by the following documents;
a. There was a family arrangement between Mr.Venugopal and the family members of the Late Mr.Ramaswamy on 25.01.2005 (Ex.D2).
b. By an assignment dated 05.10.2006, the partnership firm, Naidu Hall-Woman Exclusive assigned the rights to Ramaswamy Holdings Private Limited (Not marked).
76/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 c. On 25th August 2008/28th December 2006, Ramaswamy Holdings Private Limited assigned these rights to Mr.Aravind Ramaswamy (Ex.D5).
d. On 06.09.2018, by a business Transfer Agreement, Mr.Aravind Ramaswamy assigned the rights to the defendant (Ex.D13).
d. However, one of the 4 documents has not been marked and thus the flow of rights as claimed by the defendant is not proved. The cross examination of D.W.1 to question Nos.33, 34, 35 and 36 would prove the same.
e. Further, the deed alleged to have transferred the rights from Ramaswamy Holdings Pvt. Ltd. to Aravind Ramaswamy has two different dates. It is not impossible to have the same documents executed on two different dates. During cross examination, while answering to the question Nos.17, 18 and 19, the defendant's witness/D.W.1 stated that it should be a typographical error and the Ramaswamy Holdings Private Limited transferred the trademarks to Mr.Aravind Ramaswamy on 25.08.2008 and 77/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 that he is noticing this typographical error for the first time, which clearly shows that the said statements are false. Further, the assignment deed/Ex.D5 is dated 25.08.2008, which is about 10 days later than the affidavit of sworn by Mr.Ramaswamy before the trademarks Registry which would clearly show that the document/Ex.D5 is fabricated one and hence, deserved to be disregarded. Even the statements made in Ex.D9, Ex.D10 and Ex.D11, would prove that the defendant has played fraud on the Trademarks Office and also before this Court. The defendant in their written statement has stated that they have invested about Rs.10 Crores in the business, whereas D.W.1 in his cross examination to the question No.45, has admitted that no document has been filed to prove the same. Even to question Nos.4, 5, 6, 37, and 38, he has stated that Mr.Aravind Ramaswamy was declared as defaulter. These discrepancies show that the defendant has merely utilized the misfortune of Mr.Aravind Ramaswamy and has tried to illegally usurp the trademarks NAIDU HALL and others 78/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 and there are no proper documents tracing the title claimed by the defendant.
f. The plaintiff himself admitted that in Clause 22 of the MoU, it has been clearly mentioned that how to use the trademark as long as they continues the business in their family members and in case they want to transfer the business how to transfer between them and that they should not transfer to third party. The defendant has stated that Aravind Ramaswamy transfered the business and there is a dispute between them before the Registrar Office.
g. The MoU marked as EX.D2 clearly spells out the area of business to be conducted by the plaintiff and the defendant's predecessors in title as per which, the plaintiff is entitled to trade in ladies foundation garments to be marketed on a wholesale basis throughout India and also permitted to manufacture, deal and resell gents and children garments on retail basis and Clause 1 (b) and (c) have given the rights to the plaintiff to 79/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 do the same which reads as follows:
(b)"The parties of the second part shall make use of the brand name of "NAIDU HALL" for the manufacture and sale of ladies foundation garments to be marketed on a wholesale basis throughout India. However the parties of the second part shall be permitted to continue to manufacture and sell on retail basis ladies foundation garments through the retail outlet at C57, First main Road, Anna Nagar, Chennai".
(c) "The parties of the second part shall also be permitted to manufacture, deal and resell gents and children garments on retail basis at the present showrooms at New No.56 & 58 (Old No.94, 95), Pondy Bazaar, Chennai and at C57, First Main Road, Anna Nagar.
Chennai and/or any other place of their choice by use of NAIDU HALL brand name as retailers in their showroom"
h.As per clause 1(a) of the said MOU, the defendant is entitled to use the mark NAIDU HALL only in the respect of ladies foundation garments on retail basis within the city of Chennai and the relevant portion is extracted as here under;
"(a) The parties of the first part shall make use of the brand name of "NAIDU HALL" so far it relates to the 80/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 manufacture and sale of ladies foundation garments on retail basis within the city of Chennai only. The parties of the First part shall be entitled to open as many retail outlets as deed fit for ladies garments within the city of Chennai in the same name or in any other name.
i. The Plaintiff witness has admitted that they have as many as 10 stores that market lingeries on retail. Thus, the very sale of lingeries on retail business within the city of Chennai is in complete violation of the family arrangement and hence the plaintiff cannot use the same nor can claim any monopoly over the mark NAIDU HALL for retail business.
j. This issue is answered accordingly.
15. ISSUE No.7: Whether the suit is bad for non-joinder of necessary party?
a. The case of the plaintiff is that M.G.Naidu is the founder of the mark NAIDU HALL and they have also registered the trademark. The plaintiff is the registered proprietor of the trade mark NAIDU HALL and 81/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 its registered trademarks are marked as Ex.P.17. As per Section 28 of the Trademarks Act, 1999, the plaintiff is the exclusive proprietor of the trademarks and is entitled to prevent others from using any identical or deceptively similar trademark for identical or similar goods.
b. They also admitted that there was a MoU Ex.D2 between the plaintiff and the family of the predecessor of the defendant's family. According to the plaintiff, they came to know about the usage of deceptively similar trademark by the defendant in the year 2019 and immediately, they sent notice for which, the defendant also sent reply and after lifting of Covid lockdown, the plaintiff filed the suit.
c. The defendant has taken the defence that the plaintiff is well aware of the fact that Mr.Aravind Ramaswamy, who is one of the co- owners of the mark NAIDU HALL has entered into a Business Transfer Agreement (BTA) with the defendant whereby the trademark "Naidu Hall", the device of vermilion within a rounded device along with other marks 82/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 where unconditionally, absolutely and irrevocably assigned to and in favor the defendant herein.
d. The specific defence taken by the defendant is that Aravind Ramaswamy is one of the parties to the MoU/Ex.D2 and Clause (1)(a) of Ex.D2 has given rights to Aravind Ramaswamy.
e. The plaintiff has admitted the document Ex.D2/MoU, executed between the plaintiff and the family of Late Sri.G.Ramaswamy however, claims that Clause 22 of the MoU the brand name "NAIDU HALL" shall be utilised by the parties to the MoU for their exclusive business activities and shall not be assigned to any third party and if any of the parties desiring to transfer/sell, it has to be offered to the other. Therefore, the transfer of rights to a third party, a private limited company, is clearly impermissible under Ex.D2/MoU and hence, the defendant cannot claim any right over the trademarks including NAIDU HALL.
f. Despite the defendant made a plea in the written statement that 83/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Aravind Ramaswamy who is one of the legal heirs of M.G.Naidu and who has got rights to use the mark “NAIDU HALL” under Ex.D2/MoU, had by way of BTA and assigned the rights to the defendant and also marked documents as exhibits to that effect, the plaintiff has not impleaded the said Aravind Ramaswamy as a party to the present proceedings.
g. When the assignee who has been impleaded as a party relies on a document showing his rights, it is the bounden duty of the plaintiff to implead the assignor as a party to the present proceedings. In the absence of any relief sought for against the said Aravind, the plaintiff cannot have any relief to seek as against the defendant alone.
h. According to the plaintiff, as per clause 22 of the MoU (Ex.D2), the plaintiff ought to have impleaded the said Aravind Ramaswamy and should have challenged the said assignment made by the Aravind Ramaswamy which is against Clause 22 of MoU (Ex.D2).
i. Since the said Aravind Ramaswamy has not been impleaded as a 84/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 party, the suit is liable to be dismissed on the ground of non joinder of necessary parties.
j. This issue is answered accordingly.
16. ISSUE No.8: Whether the plaintiff has challenged the rights of the defendant's predecessor in title?
a. According to the defendant, Mr.Arvind Ramaswamy who is one of the legal heirs of M.G.Naidu has assigned the mark "Naidu Hall" and other marks to and in favour of the defendant herein by way of BTA and that the defendant is the subsequent proprietor of the mark "Naidu Hall"
and further, the defendant has also taken over the business unit of the said Mr.Arvind Ramaswamy.
b. The plaintiff admitted the MoU/Ex.D2 entered into between the plaintiff's family and the family of G.Ramaswamy and that the family members of the predecessor of the defendant have right in the mark. 85/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 c. A perusal of MoU shows that the legalheirs of G.Ramaswamy, namely Smt.R.Suseela, wife of G.Ramaswamy, R.Arvind, Son of G.Ramaswamy, Mrs.T.Poornima, daughter of G.Ramaswamy were shown as parties of the first part. Clause (1) a of the MoU/Ex.D2 shows the rights given to the legal heirs of G.Ramaswamy who are the first party in deed. The rights of the plaintiff and his family have been given in Clause 1 (b) and (c) of the MoU/Ex.D2.
d. The plaintiff has admitted the document Ex.D2/MoU, executed between the plaintiff and the family of Late Sri.G.Ramaswamy however, claims that Clause 22 of the MoU states that “the parties agree that the brand name "NAIDU HALL" shall be utilised by them for their exclusive business activities and shall not be assigned for exploitation by any third party either directly or indirectly and if any of the parties desiring to transfer/sell, it shall be offered to the other”. Therefore, the transfer of rights to a third party, a private limited company, is clearly impermissible 86/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 under Ex.D2/MoU and hence, the defendant cannot claim any right over the trademarks including NAIDU HALL.
e. Though the plaintiff and the defendant are not family members of M.G.Naidu, the defendant is not totally stranger to the plaintiff. Admittedly, he is the son of Aravind Ramaswamy's maternal aunt.
f. Though the defendant has taken stand that Aravind Ramaswamy has assigned the mark "Naidu Hall" and other marks to and in favour of the defendant herein by way of BTA, the plaintiff neither impleaded the said Aravind Ramaswamy as a party to the suit nor challenged the assignment given to the defendant and also not challenged the rights of the defendant's predecessor in title?
g. The plaintiff has only taken the defence that there is a bar as per Clause 22 of the MoU/Ex.D2 to transfer the right of the mark to third party. However, a reading of the plaint and the relief sought for shows that the plaintiff has not challenged the rights of the predecessor in title of the 87/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 defendant. Unless the plaintiff impleads the said Aravind Ramaswamy and challenges the assignment, the plaintiff is not entitled to the relief.
h. This issue is answered accordingly.
17. ISSUE No.1: Whether the defendant has copied the plaintiff's trademark "NAIDU HALL" and illegally used it for its business and thereby committed the act of infringement?
a. As stated above, a careful perusal of Ex.P.20 and Ex.P21 shows that except the mark name NAIDU HALL, others are not similar and the plaintiff has admitted the MoU entered into between the plaintiff's family and the family of G.Ramaswamy and rights of the defendant's predecessor in title.
b. The defendant has taken the specific stand that, Aravind Ramaswamy assigned the mark "Naidu Hall" and other marks to and in favour of the defendant by way of Business Transfer Agreement and based on the assignment, he took over the business unit of the said Mr.Arvind 88/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 Ramaswamy and using the trademark along with a word " A Moham Venture' 1939.
c. However, the plaintiff neither impleaded the said Aravind Ramaswamy as a party to the suit nor challenged the assignment given to the defendant.
d. Further, the application filed by the plaintiff is still pending before the Registrar Office. Under these circumstances, there is no infringement by the defendant.
e. This issue is answered accordingly.
18. ISSUE No.6: Whether other reliefs the plaintiffs are entitled to?
a. As stated above, the plaintiff neither impleaded the said Aravind Ramaswamy as a party to the suit nor challenged the assignment given to the defendant and also not challenged the rights of the defendant's predecessor in title. Further, the application filed by the defendant's predecessor in title is still pending in the Registrar Office. 89/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 b. Under these circumstances, the plaintiff is not entitled to any other relief. However, the plaintiff is at liberty to work out his remedy after disposal of the application pending before the Registrar of Trademark.
c .This issue is answered accordingly.
Resut:
19. Accordingly, this suit is dismissed. There shall be no order as to costs.
06.01.2025 (1/2) ksa-2 List of Witness Examined on the side of the Plaintiff:
P.W.1 - Mr.K.Balasundaram List of Exhibits marked on the side of the plaintiff:21 S.No. Exhibits Description of Documents 1 P.1 The Authorization letter dated 08.06.2023 2 P.2 The photocopy of the partnership deed of the plaintiff dated 12.02.1973 (Compared with original) 3 P.3 The photocopy of the Retirement Deed in favour of the plaintiff dated 31.03.1982 (Compared with original) 4 P.4 The photocopy of the Partnership deed of the plaintiff dated 01.04.1982 90/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 S.No. Exhibits Description of Documents 5 P.5 The photocopy of the Partnership Deed of the plaintiff dated 15.05.1992 (The learned counsel for the defendant has objected that the original has not produced and no explanation given in the proof for not filing the original partnership deed. But agreed to mark the partnership deed).
6 P.6 The photocopy of the Partnership Deed of the plaintiff dated 01.04.1996 (The learned counsel for the defendant has objected that the original has not produced and no explanation given in the proof for not filing the original partnership deed. But agreed to mark the partnership deed).
7 P.7 The photocopy of the Pan Card of plaintiff (Compared with original) 8 P.8 The photocopy of the Partnership Deed of the plaintiff dated 26.11.2004 (Compared with original) 9 P.9 The photocopy of the Partnership Deed of the plaintiff dated 25.06.2009 (Compared with original) 10 P.10 The photocopy of the Partnership Deed of the plaintiff dated 01.04.2011 (Compared with original) 11 P.11 The photocopy of the acknowledgement of registration of firm dated 02.03.2012 (Compared with original) 12 P.12 The photocopy of the Amendment to Deed of Partnership dated 25.04.2016 (Compared with original) 13 P.13 The printout of the GST Registration Certificate of plaintiff dated 21.12.2017 14 P.14 The original certificate of Chartered accountant for year wise turnover and advertisement expenses by the plaintiff 91/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 S.No. Exhibits Description of Documents dated 21.03.2019.
15 P.15 The office copy of the cease and desist notice sent by the plaintiff dated 10.10.2019 16 P.16 The original reply to plaintiff's notice by the defendant dated 22.10.2019 17 P.17 The certified copy of the legal proceeding certificate for plaintiff's trade mark under No.2582198 in Class 35, No.2793271 in Class 24, No.1746541 in Class 24, No.1746544 in Class 25, No.2582195 in Class 25, No.2582196 in Class 25, No.2582197 in Class 35, No.2793274 in Class 40 and No.3595084 in Class 35 dated 04.09.2020.
18 P.18 The printout of the advertisement and publicity - Ledger account of plaintiff (The learned counsel for the defendant has objected that on the basis of admissibility and mode of proof.) 19 P.19 The photocopy of the invoice for defendant's products dated 14.09.2020 (The learned counsel for the defendant has admitted to mark the document and subject to admissibility and mode of proof).
20 P.20 The printout of the plaintiff's Goods/Services (The learned counsel for the defendant has admitted to mark the document and subject to admissibility and mode of proof).
21 P.21 The printout of the defendant's Goods/Services (The learned counsel for the defendant has admitted to mark the document and subject to admissibility and mode of proof).
92/97
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D.W.1 - Mr.Sujay Kanth List of Exhibits marked on the side of the Defendant:19 S. Exhibits Description of Documents No. 1 D.1 The original board resolution dated 20.07.2023 2 D.2 The photocopy of the MoU dated 20.01.2005 entered between Mr.Venugopal's family and late G.Ramasamy's Family (The learned counsel for the plaintiff has objected on the ground that it is a photocopy. But it is an admitted document) 3 D.3 The printout of the trademark application under No.1342469 4 D.4 The printout of the trademark application under No.1393584 along with online status as on 26.03.2021 (The learned counsel for the plaintiff has objected to marking Ex.D3 and Ex.D4 on the ground that only certified copies obtained from the trademark registry can be marked in a legal proceedings and also because the defendant is not a party to the said document and the documents are not exact copies of the online records available).
The counsel for the defendant is about to mark the photocopy of the assignment deed between Naidu Hall the women exclusive partnership firm represented by Ms.R.Sheela and Mr.R.Aravind and M/s.Ramasamy Holdings Pvt. Ltd. dated 05.10.2006 (The learned counsel for the plaintiff has objected to the document being only a photocopy and the deponent has not explained in his proof affidavit as to why the original has not been filed. Hence the document is not marked.
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5 D.5 The photocopy of the assignment deed executed between
M/s.Ramasamy Holdings Private Limited and R.Aravind dated 25.08.2008 (Original is produced, compared and the original is returned to the defendant's counsel). 6 D.6 The printout of the certificate of incorporation of the defendant reflecting its change in name dated 17.10.2018 (The learned counsel for the plaintiff has objected to mark the document on the ground that the said document is a electronic record downloaded from the internet and hence the same cannot be produced without an affidavit/certificate under Section 65B).
7 D.7 (Series) (3 Nos.) are the printout of the amended TM 1 and amendment application in TM 16 filed in trademark application under No.1393584 filed by the defendants predecessor in title dated 11.10.2005.
8 D.8 The printout of the notice of opposition filed by the plaintiff to trademark application No.1393584 dated 30.11.2007. 9 D.9 The printout of the counter statement filed by the defendant's predecessor in title to the opposition filed by the plaintiff to trademark application No.1393584 dated 14.03.2008. 10 D.10 The printout of the evidence in support of opposition filed by the plaintiff to trademark application No.1393584 dated 19.06.2008 11 D.11 The printout of the evidence in support of application filed by the defendant's predecessor in title to trademark application No.1393584 dated 14.08.2008.
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12 D.12 The printout of the reply evidence filed by the plaintiff to
trademark application No.1393584 dated 18.10.2008 (The learned counsel for the plaintiff has objected to marking Ex.D7 to Ex.D12 on the ground that only certified copies obtained from the trademark registry can be marked in a legal proceedings and also because the defendant is not a party to the said document).
13 D.13 The photocopy of the business transfer agreement entered into between R.Aravind and the defendant dated 06.09.2018 (Original is produced, compared and the original is returned to the defendant's counsel).
14 D.14 (Series) (3 Nos.) are the Franchise agreement dated 04.7.2019 between the defendant and T.Senthil Garments, agreement dated 06.11.2020 between the defendant and Saivathsam Enterprises and agreement dated 05.08.2020 between the defendant and M/s.Akash Enterprises (Original is produced, compared and the original is returned to the defendant's counsel).
15 D.15 (Series)(4 Nos.) are the photocopy of the rental agreement dated 06.06.2019 between K.Baskar and the defendant, agreement dated 07.06.2019 between V.Ethirajan and the defendant, the agreement dated 23.09.2019 between N.Sreedhar, Aatman Chand and the defendant and the agreement dated 11.03.2020 between C.Loganathan and the defendant (original is produced, compared and the original is returned to the defendant's counsel).
16 D.16 The printout of the photograph showing Mr.Aravind Ramasamy inaugurating the Franchise store of the defendant.
95/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 S. Exhibits Description of Documents No. 17 D.17 The printout of the invoices raised by the defendant 18 D.18 The photocopy of the bills raised by the plaintiff and printout of the plaintiff's name board and goods sold. 19 D.19 The 65B affidavit filed for Ex.D3, Ex.D4, Ex.D7 to Ex.D12, Ex.D16 and Ex.D17. 06.01.2025 (2/2) Index : Yes / No Speaking Order : Yes / No Neutral Case Citation : Yes/No Ksa-2 96/97 https://www.mhc.tn.gov.in/judis C.S (Comm. Div.) No.325 of 2020 P.VELMURUGAN. J. Ksa-2 Pre-Delivery Order in C.S (Comm. Div.) No.325 of 2020 06.01.2025 97/97 https://www.mhc.tn.gov.in/judis