Madras High Court
A.D.Padmasingh Issac vs Aachi Cargo Channels Private Limited on 29 November, 2019
Author: Krishnan Ramasamy
Bench: Krishnan Ramasamy
C.S.No.341 of 2010
IN THE HIGH COURT OF JUDICATURE AT MADRAS
JUDGMENT RESERVED ON : 28.08.2019
JUDGMENT PRONOUNCED ON : 29.11.2019
CORAM
THE HONOURABLE MR.JUSTICE KRISHNAN RAMASAMY
Civil Suit No. 341 of 2010
1.A.D.Padmasingh Issac
Trading as Aachi Spices and Foods,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar,
Chennai – 600 040.
2.M/s.Aachi Masala Foods (P) Ltd.,
No.6, Ground Floor,
15th Street, Anna Nagar, 'G' Block,
Chennai – 600 040.
Represented by its Director,
Ashwin Pandian ... Plaintiffs
Versus
Aachi Cargo Channels Private Limited,
Door No:9, III Floor, VGP Murphy Squire,
No:19, GST Road, St Thomas Mount,
Chennai – 600 016,
Tamil Nadu. ... Defendant
Plaint filed under Order VII Rule 1 C.P.C. read with Order IV
Rule 1 of the High Court Original Side Rules praying for:
(a) granting a permanent injunction, restraining
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the defendant, by himself, his servants, agents,
distributors or anyone claiming through him from
manufacturing, selling, advertising and offering for sale
using the same name AACHI or used by the plaintiffs
and the trademark name Aachi Cargo Channels Pvt. Ltd.,
or any other similar trademark name or similar sounding
expression in any media and use the same in name
board, invoices, letter heads and visiting cards or by
using any other trademark/name which is in any way
visually or deceptively or phonetically similar to the
plaintiffs' trademark/name AACHI and use the same in
pouches, packets or use the mark in invoices, letters
heads and visiting cards or any other trade literature or
by using any other trademark which is in any way
visually, or phonetically similar to the plaintiffs'
registered trademark Nos. Nos.922594, 922595,
1374937, 1340324, 1340325, 1367430, 1372439,
1372440, 1375754, 838786, 976559, 1025302,
1025304, 1025305, 1318493, 1318494, 1318495,
1375755, 1375756, 1380625, 1357284, 1479158,
1479159, 1418281, 1025303, 1415328, 1415329 and
1116254 or in any manner infringing the plaintiffs'
registered trademark referred herein.
(b) directing the defendant to surrender to the
plaintiffs all the packing material, cartons, advertisement
materials and hoardings, letter-heads, visiting cards,
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office stationery and all other materials
containing/bearing the name AACHI as shown in
Document No.2 or other deceptively similar trademark
used in the pouches and packets bearing the word
AACHI.
(c) directing the defendant to render an account of
profits made by them by the use of the impugned
trademark and get up as shown in Document No.2 on
the service referred and decree the suit for the profits
found to have been made by the defendants, after the
defendants have rendered accounts:
(d) directing the defendant to pay to the plaintiffs
the costs to the suit, and
(e) pass such further or other orders, as this
Hon'ble Court may deem fit and proper in the
circumstances of the case and thus render justice.
For Plaintiffs : Mr. P.S.Raman, Senior counsel
for Ms. Gladys Daniel
For Defendant : Ms. Revathi G. Mohan
JUDGMENT
The plaintiff has instituted the present suit for the relief, as stated in prayer portion of this judgment.
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2. The averments in the plaint in brief are as follows:-
(i) The first plaintiff originally started trading under the name and style of Abishek Enterprises. The first plaintiff was engaged in the business of manufacturing and marketing spices and condiments under the trademark AACHI. The mark was first adopted in the year 1995. At the time of adoption of the trademark AACHI the mark was unique and no one else was using the same with respect to spices and condiments or any other goods/services.
The mark indicates only the plaintiffs as the source and no other.
(ii) The trading style of the first plaintiff was subsequently changed to Naveen Enterprises and subsequently AACHI Spices and Foods. The first plaintiff trading as AACHI Spices and Foods was registered under the CST, VAT, TNGST on 12.07.2006, 22.12.2006, 28.12.2006 and 03.01.2007 respectively under Exs.P11 and P14. With the growth of the organization Nazareth Foods Pvt. Ltd., was incorporated to undertake the manufacturing activities under Ex.P9. 4/38 http://www.judis.nic.in C.S.No.341 of 2010
(iii) After the mark acquired distinctiveness, the first plaintiff applied for registration of the Trademark AACHI and at present there are over 106 registration obtained for the Trademark AACHI in various device and word marks in various classes as set out in Ex.P7. The first plaintiff also secured registration of the Trademark AACHI in various countries around the world as set out in Ex.P8. The mark has been continuously used and advertised which is evidenced by the invoices filed in Ex.P4, advertisement sample in Ex.P6 and advertisement expenditure in Ex.P5.
(iv) The second plaintiff was incorporated to both market and manufacture the AACHI products of the first plaintiff. The second plaintiff is the licensee of the first plaintiff. Ex.P10 is the license granted by the first plaintiff in favour of the second plaintiff.
(v) The plaintiffs have been manufacturing and marketing spices and other food products since 1995 for the past 25 years under the Trademark AACHI. The turnover of the plaintiffs in the year 2006 was about Rs.230 crores. The mark AACHI acquired tremendous reputation and goodwill and the trade and public associate the Trademark AACHI only with the plaintiffs. The plaintiffs have diversified their use with respect to Educational 5/38 http://www.judis.nic.in C.S.No.341 of 2010 Institutions, Hotels, Cleaning preparations, Medicines, Hotels, Clothing as set out in Ex.P15.
(vi) While so, the plaintiffs came to know of the use of the trademark AACHI CARGO CHANNELS PVT.LTD., in February 2010 by the defendant and therefore, the plaintiffs came forward with the above suit in March 2010. The plaintiffs contended that they are aggrieved that the defendant is using the Trademark AACHI as part of its company name. The defendant is not entitled to use the registered trademark of the plaintiffs as part of their company name under both the Companies Act as well as the Trademarks Act, hence, the suit.
3. Defendant has filed written statement, wherein, it is stated as follows:-
(ii) The defendant using the mark 'Aachi' Cargo Channels Pvt.
Ltd., and such usage will not amount to infringement of the mark 'Aachi'. The question of infringement would not arise for the following reasons:
a) Both plaintiffs and defendant are operating in two totally different fields, unconnected to each other. 6/38
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b) There is neither similarity of goods manufactured nor services rendered by both the plaintiffs and the defendant. The plaintiffs are said to have processed and marketed food products while the defendant is doing the cargo service, transporting various goods.
c) There is no nexus between the nature of the trade done by the plaintiffs and the business service of the defendant. The plaintiffs are said to have manufactured, processed and marketed food products to the consumer public whereas the defendant is doing cargo services namely exporting and importing the various kinds of goods, which avocation has nothing to do with any access to the consumer public.
d) Infringement of trademark would be caused only if it was likely to create confusion that business of defendant was that of the plaintiffs. Not even an inference can be drawn with reference to the nexus between the plaintiffs and defendant as far as the nature and the field of their business are concerned.
(iii) In the special leave petition filed by the plaintiffs against the order in O.S.A.47/2013 dated 12.11.2013, the Hon'ble Supreme 7/38 http://www.judis.nic.in C.S.No.341 of 2010 Court declined to interfere.
(iv) The use of the word mark 'Aachi' by the defendant would not amount to fraud under the Trademarks Act, in as much as the registration of the mark 'Aachi' is void ab initio. The allegation that the conduct of the defendant amounts to fabrication of Trademark and it is an offence punishable under the Trademarks Act is baseless, motivated and not correct.
(v) The fact is the defendant S.Saravanan Chettiar, Director of the defendant's Company is a native of Thanjavur which is one among the Geographical origin of the mark 'Aachi' in honour of his beloved mother [Gnansundari Aachi]. Therefore, among the plaintiffs and the defendant it is the latter who is having the locus standi as well as the qualification to use the mark 'Aachi'.
4. The learned counsel for the plaintiffs submitted that the plaintiffs also filed reply to the counter claim filed by the defendant by stating that it is neither maintainable in law nor in facts and needs to be dismissed in limine on the following preliminary objections:
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(a) The defendant prayer for passing off a decree declaring plaintiffs registered Trademark as null and void ab initio is not maintainable in fact or in law. Such a plea cannot be raised before this Hon'ble Court and can be raised only before Intellectual Property Appellate Board (IPAB) by filing necessary rectification proceedings as provided under Sections 124, 125 and 57 of the Trademarks Act, 1999. The defendant's challenge to the same in the infringement proceedings is not valid. Therefore, the counter claim for cancellation of the plaintiff's registered trademark is liable to be dismissed.
(b) The plaintiffs are the prior users and registered proprietors of the trademark AACHI from 1995. The defendant is the subsequent user of the identical mark from 03.07.2008. Therefore, the defendant cannot seek any injunction against the plaintiffs which is not maintainable under Sections 27, 28, 29 and 34 of the Trademarks Act, 1999.
(c) As stated above the plaintiffs are the prior users and registered proprietor of the Trademark AACHI. The defendant is the subsequent user who has slavishly imitated the plaintiff's trademark. Under Section 29(4) of the Trademarks Act the use of 9/38 http://www.judis.nic.in C.S.No.341 of 2010 the identical mark with respect to goods that are not similar to the plaintiffs goods also amounts to infringement of registered trademark. Hence, the suit filed is maintainable under Section 134 of the Trademarks Act, 1999.
(d) The Trademark AACHI does not have any geographical origin. It is the plaintiffs registered trademark AACHI which is the well known mark and used for food products all over India. The defendant is a recent entrant who has slavishly adopted the plaintiffs trademark and is falsely claiming use of the mark since 2008. The defendant's mark AACHI misleads the trade and public.
(e) The plaintiffs reiterate and reaffirm that the defendant has made frivolous attempts and obtained the incorporation of its company by fraudulent means.
5. This Court, vide order, dated 19.12.2016, framed the following issues:-
(i) Whether the plaintiffs are the prior user of the Trademark AACHI?
(ii) Whether the plaintiffs are the registered proprietor of the Trademark AACHI?
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(iii) Whether the use of the Trademark AACHI with respect to the Cargo services amounts to infringement of the plaintiffs Trademark AACHI?
(iv) Whether the use of the Trademark AACHI with respect to the Cargo services amounts to passing off of the plaintiffs Trademark AACHI?
(v) Whether the plaintiffs are entitled to the relief of permanent injunction against defendant from manufacturing, selling, advertising and offering for sale, the name AACHI and the trademark name Aachi Cargo Channels Pvt. Ltd.,?
(vi) Whether the plaintiffs are entitled for a direction against the defendant to surrender to the plaintiffs all packing material, cartons, and such other materials containing the name of AACHI?
(vii) Whether the plaintiffs are entitled for a direction against the defendant to render accounts and profits made by them using the impugned trademark?;
(viii) To what reliefs the parties are entitled to? Issues Nos. 1, 2, 3 and 4:
6. On behalf of the plaintiffs, P.W.1, deposed and Exs.P.1 to P.16 have been marked. On the side of the defendant, D.W.1 was 11/38 http://www.judis.nic.in C.S.No.341 of 2010 examined and Exs.D1 to D.5 have been marked.
7. The learned Senior counsel appearing for the plaintiffs contend that the trademark “AACHI” is the registered trademark and therefore, the plaintiff is the registered proprietor of the trademark “AACHI”, the trademark of the plaintiffs “AACHI” have been registered under various classes, and without different labels. Further, he contended that the word mark “AACHI” also got registered. The defendant trade name “Aachi Cargo Channels Private Limited” is a company registered as per the provision of the Companies Act, 1956. Therefore, the learned Senior counsel contend that the defendant trademark “AACHI” is a word mark of the plaintiffs for which the plaintiffs are the proprietor of the said mark. The said registered trademark of the plaintiffs is part of the trade name of the defendant. Therefore, the defendant is copying the whole registered trademark of the plaintiffs as its part of the trademark and the defendant trade mark is identical with or similar to the registered trademark of plaintiffs. Further, he would contend that the plaintiffs registered with different classes, includes the Cargo services. Even if the registration is not covered for cargo 12/38 http://www.judis.nic.in C.S.No.341 of 2010 services still, the defendant is not entitled to use the trademark in respect of other business. Since the plaintiffs obtained/created reputation over a period of usage of its registered trademark and also by virtue of the said usage, the plaintiffs obtained the distinctiveness in respect of its trade usage of the said trademark “AACHI” in relation to its trade, by the use of the word AACHI, the defendant takes unfair advantage of the reputation gained by the plaintiff and that is the only intention of the defendant to carry the word “AACHI” as part of its trade name. Since the plaintiffs obtained the distinctiveness of the use of the word “AACHI” in their trade, the plaintiff has exclusive right to use the word “AACHI”. When such being the case, the defendant is not entitled to use the word “AACHI” as part of its trade name. In any case, the use of the word would amount to taking unfair advantage and detrimental to the distinctive character and reputation of the registered trademark of the plaintiffs, which would cause adverse impact in the business of the plaintiff.
8. The learned Senior counsel contends that any adverse impact on the defendant company would directly affect the 13/38 http://www.judis.nic.in C.S.No.341 of 2010 reputation of the plaintiffs and therefore, he would submit that the plaintiff has satisfied all the condition imposed in Section 29 (4) of the Trademarks Act, 1999 to substantiate that the defendant is infringing the registered trademark of the plaintiffs.
9. Further, the learned Senior counsel contend that the plaintiffs are manufacturers and marketers of spices and Food products under the trademark “AACHI” and have more than 130 registration in the name of “AACHI”. Therefore, under the statute, the plaintiffs have exclusive right for the use of the word “AACHI” to the exclusion of all other including the defendant. The defendant is a recent entrant who has slavishly adopted the plaintiffs trademark and misleads the public. The prolonged and continuous use of the mark AACHI since 1995 and enormous goodwill and reputation earned by the plaintiffs has marked its striking identity in the public mind and members of the trade about the products bearing the mark AACHI. This exclusive association of the mark with the plaintiffs is the reason behind the claim of proprietorship. According to the plaintiffs, the trade mark AACHI has become very valuable Intellectual Property of the plaintiffs. The plaintiffs have the 14/38 http://www.judis.nic.in C.S.No.341 of 2010 statutory as well as the proprietary rights over the trademark and prior user of the mark AACHI since 1995. Therefore, he contend that except the plaintiffs if any person uses without the consent of the plaintiffs, it amounts to infringement of the plaintiffs registered trademark.
10. The mark being established by the plaintiffs company has won a great reputation and an exclusive identity with the plaintiffs, it is dishonestly being grabbed by the defendant. The adoption of the mark is being malafide and dishonest having known the reputation of the plaintiffs. The trade name adopted by the defendant tends to mislead the public and members in trade. The defendant has adopted the mark which is deceptively and phonetically similar to that of the plaintiffs mark with the malafide intention to ride on the reputation and goodwill of the plaintiffs. Under Section 29(4) even though the plaintiffs and defendant are not carrying on same line of business, the use of identical mark infringes the trade name under the Act. The defendant has adopted the plaintiffs registered trademark “AACHI” which amounts to fraud and falsification of Trademark under Section 102 and it is an offence 15/38 http://www.judis.nic.in C.S.No.341 of 2010 punishable under Section 103 of Trademarks Act, 1999. The plaintiffs over a period of two decades have achieved the turnover of 1300 crores as on 31.03.2015. In this regard, the plaintiffs also marked Ex.P3. The plaintiffs also invested a sum of Rs.21 crores for the advertisement for the year ending 31.03.2015 and in this regard the plaintiffs also filed the documents marked as Ex.P3. By virtue of spending huge amount, the plaintiffs achieved the turnover of more than 1000 (One Thousand) Crores for the year ending 31.03.2015. Therefore, he contended that the plaintiffs product along with the trademark “AACHI” reached the public enormously and the plaintiffs also spent huge amount by way of advertisement only for this purpose and thereby created reputation and goodwill among the public. Now, the defendant simply by copying the registered trademark of the plaintiffs as a part of its trade name has been riding on the goodwill of the plaintiffs and thereby taking unfair advantage. Therefore, the learned Senior counsel submits that the defendant's identical trademark with respect to the Cargo services will inevitably dilute and bring disrepute to the distinctive character of the plaintiffs trademark. The plaintiffs have diversified their activities in the past 25 years into Hotels, Clothing, Cleaning, 16/38 http://www.judis.nic.in C.S.No.341 of 2010 Medicines, Education, etc., if the defendant uses the same trademark as its part of the trade name with respect to the Cargo Services it will lead to dilution and disrepute to the business of the plaintiffs. Hence he submits that the plaintiff had satisfied all the requirements of Section 29(4) which reads as follows:-
“29(4).A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which-
(a) is identical with or similar to the registered trademark; and
(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
11. Accordingly, the learned Senior counsel submits that the defendant infringed the registered trademark of the plaintiffs. Therefore, he contend that the defendant is passing of Cargo Services as that of the plaintiffs.
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12. On the other hand, the learned counsel for the defendant would contend that the plaintiffs without any authorisation had deposed through Mr. B. Gnanasambandam, before this Court and he was examined as P.W.1. During the course of the cross examination of PW.1, he admitted that he joined the plaintiff company only in 2009 and he has no knowledge about the plaintiff company as to whether it was started in 1995 or not. Further, the learned counsel contend that P.W.1 has deposed admitting that the plaintiff company did not carry on the same business of the defendant. Whereas, the defendant company has incorporated under the name and style of “Aachi Cargo Services Private Limited"
and has been running the cargo services business. The nature of the defendant business is transportation of logistics. Therefore, she contend that the defendant business is nothing to do with the mark or the trade name of the plaintiffs. The plaintiffs cannot exclusively claim that the word mark “AACHI” which denotes respect to the women hood in the state of Tamilnadu. The defendant marked Ex.D4 which is the plaintiffs web page profile which reiterated the defendant contention that the Tamil word “AACHI” is used for 18/38 http://www.judis.nic.in C.S.No.341 of 2010 addressing the women with respect. It is also designed from the word “AACHI” which means to rule in Silappathikaram. “AACHI is a familiar word with reference to tasty food in Chetinadu region. The word 'Aachi' is in customary usage in the current Tamil Language and it has it's own geographical origin. The defendant is a native of Thanjavur, which is one among the geographical origin of the mark 'Aachi'. Hence, according to the defendant, the word “AACHI” in being used from time immemorial and its not created, designed or coined by the plaintiffs. Further, the learned counsel for the defendant contend that the AACHI is not in any manner infringes the trade name of the plaintiffs. The word AACHI is neither created nor invented by the plaintiffs. They have admittedly stated that it has been diversified from the word 'AACHI' to label. Thus, there is no creation of mind in the word 'AACHI' adopted by the plaintiffs. The word "Aachi" has been documented in Thanjavur Tamil Palkalaikazhaga Perum Sollagarathi (volume 2) and Chennai Palkalaikazaga Tamil Peragarthi and the document produced by Tamil Valarchi Iyakkam dated 10.10.2012 has been marked as Ex.D3.
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13. The learned counsel also referred to Section 2(h) of the Act, which reads as follows:-
(h) “deceptively similar”,-A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;
14. The label of the mark “AACHI” by the plaintiffs under Ex.P2 and that of the defendant under Ex.D5 can be easily distinguished. The style, font and the color of the word “AACHI” used by the defendant is distinctive to that of the plaintiffs style, font and color. The common general public cannot gets confused with the plaintiffs product from that of the services offered by the defendant under the same trade name. Therefore, the counsel contend that the trade name of the defendant is neither deceptive nor phonetically similar as contended by the plaintiffs. The defendant use of the mark AACHI Cargo is not common color infringement of the mark “AACHI”. The defendant using the mark “Aachi Cargo Channels Pvt. Ltd., is not committing any blatant infringement of the mark “AACHI”. The question of infringement would not arise for the following reasons:-
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a) Both plaintiffs and defendant are operating in two totally different fields, unconnected to each other.
b) There is neither similarity of goods
manufactured nor services rendered by both the
plaintiffs and the defendant. The plaintiffs are said to have processed and marketed food products while the defendant is doing the cargo service, transporting various goods.
c) There is no nexus between the nature of the trade done by the plaintiffs and the business service of the defendant. The plaintiffs are said to have manufactured, processed and marketed food products to the consumer public where as the defendant is doing Cargo services namely exporting and importing the various kinds of goods, which avocation has nothing to do with any access to the consumer public.
d) Infringement of trademark would be caused only if it was likely to create confusion that business of defendant was that of the plaintiffs. Not even an inference can be drawn with reference to the nexus between the plaintiffs and defendant as far as the nature and the field of their business are concerned.
15. Therefore, she contends that A) The business of both plaintiffs and defendant are different 21/38 http://www.judis.nic.in C.S.No.341 of 2010 in character.
(b) The word mark AACHI is not similar with that of the mark “AACHI” (C) The registration of the word mark AACHI is in violation of the provisions contained in Sections 9 and 11 of the Trademarks Act, 1999. The registration is illegal and void. The word AACHI has its own geographical origin. The AACHI is a fond reference to 'Mother' in Chettinad. 'Aachi' has its geographical origin and its common usage in south India by general public to honour elderly women. Therefore, she contend that there is no infringement on the part of using of the trade name by the defendant due to the reason there is no similarity in the registered trade name of the plaintiffs. Further, the defendant has been using the word “AACHI” which is no way connected with the business of the plaintiff. Therefore, the question of riding on the reputation of the plaintiffs does not arise. Hence, there is no need for the defendant to pass on its case as that of the plaintiffs as long as the defendant is using the word AACHI, over which no one can claim exclusive right for the use.
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16. In reply, Mr.P.S.Raman, learned Senior counsel for the plaintiffs would contend that the plaintiffs was the authorized user of the trade name and in this regard, the plaintiffs also marked the Ex.P1. The trademark “AACHI” or the word “AACHI” is common word and it is very familiar in the South Tamil Nadu which is used to call the mother and grand mother as “AACHI”. The mark adopted by the plaintiffs “AACHI” is only suggestive in respect of its business. However, he contend that though the word is common in usage the said word AACHI is used since time immemorial to call the mother and grand mother as AACHI. He would submit that the word AACHI has been first used by the plaintiffs in relation to the plaintiffs trade parlance. Further, by using the word, the plaintiffs have earned enormous goodwill among the public. The plaintiffs are the first person who introduced the word 'AACHI' in relation to the business and it has now become popular among the public. The plaintiffs are not being in single business but various types of business having obtained more than 113 trade registration in respect of various business. Therefore, the people who know the use of the word AACHI in relation to the business of the plaintiff and to such extent, they have created the goodwill. Therefore, he 23/38 http://www.judis.nic.in C.S.No.341 of 2010 contend that the defendant mark is deceptively similar to the trademark “AACHI”. Since, the plaintiffs created enormous goodwill and the case against the defendant proved to the extent that the defendant name is clearly amounts to infringement due to the reason he is trying to take unfair advantage.
17. The plaintiffs trademark AACHI is a registered trademark and plaintiffs are the proprietor of the registered trademark. The plaintiffs also registered the word mark AACHI with regard to different types of products. The plaintiffs have been using the word AACHI in relation to their business since 1995. Admittedly, the defendant has been using its trade name in the business of transporting various goods under the name of AACHI Cargo Channels. However, the plaintiffs are not carrying on any cargo transportation business services. The defendant's trade name includes the registered trademark AACHI as part of its trade name. Admittedly, the plaintiffs and defendant are in different line of business. However, the defendant has been using the trade mark as part of its trade name though the said mark of the defendant used in relation to the goods or service which are not similar to 24/38 http://www.judis.nic.in C.S.No.341 of 2010 those for which the trademark is registered by the plaintiffs.
18. The plaintiffs are using its trade mark 'AACHI' since 1995 to its products, not only for a single product, but they have registered the said trade mark 'AACHI' for more than 130 products and all the products are in the market. Therefore, the said word 'AACHI' is very popular among the people and by virtue of naming its products as 'AACHI' more than 130 products, it has certainly reached the mind of millions of people.
19. On the other hand, the defendant named its Company by prefixing the word 'AACHI' in the year 2008. Apart from the name of the defendant, the word 'AACHI' has not been registered anywhere including with the Registrar of trade mark by the defendant. But the claim of the defendant is that the services provided by the defendant are entirely different from the services or products of the plaintiffs. Therefore, they have strongly contended that this is a common word, which refers to grand mothers and mothers in South Tamil Nadu and it has been in the usage in time immemorial. Even in Silapathikaram, it has been referred to Rule. Therefore, she 25/38 http://www.judis.nic.in C.S.No.341 of 2010 contended that this word 'AACHI' is a very common word and it has been very popular among the South India since time immemorial. Hence, the plaintiffs cannot claim any exclusive right over the name 'AACHI'.
20. No doubt, the word 'AACHI' has been in the usage in South India from time immemorial and it has been used commonly by the people to refer grand mothers and mother. This Court also agreed with the contention that the word 'AACHI' is in common usage and it has been in the usage of the South India, since time immemorial. However, with respect to the business world, the word 'AACHI' has been introduced only by the plaintiffs. The word 'AACHI' is familiar in South Tamilnadu from time immemorial, whereas the plaintiff has introduced this word not only in South Tamil Nadu but also through out the Tamil Nadu expanding its business with the trade name 'AACHI' beyond Tamil Nadu also, including Karnataka, Andra Pradesh and Kerala substantially and some places in India and aborad. Therefore, the plaintiffs have created goodwill to the word 'AACHI' not only in Tamil Nadu but also the entire South India, extensively. Even the plaintiffs' product under the trade name of 26/38 http://www.judis.nic.in C.S.No.341 of 2010 'AACHI' is available many places in India and also in many countries. Hence, the plaintiffs created enormous goodwill and reputation for the word 'AACHI', whereas the word 'AACHI' in respect of calling grand mothers and mothers only in South Tamil Nadu from time immemorial. The credit of taking the word 'AACHI' through out South India and many parts of the India and to the business world only by the plaintiffs. The word 'AACHI' is familiar in South Tamil Nadu in respect of non-business, whereas with respect to the business world, the word 'AACHI' has been introduced by the plaintiffs not only in Southern part of Tamil Nadu but also to the entire part of South India apart from familiarising the word 'AACHI' beyond South India and many parts of the world. The plaintiffs are the pioneers in taking the word 'AACHI' into the business world. As stated above, not only for one product, but there are number of products available in the market through the plaintiffs under the Trade name 'AACHI'. Therefore, now the people will know the word 'AACHI' in connection with business with reference to the product of the plaintiffs alone. The plaintiffs have not introduced one product in the market but they have introduced more than 130 products and registration also made under the Trademarks Act for the exclusive 27/38 http://www.judis.nic.in C.S.No.341 of 2010 use of the word 'AACHI'. Under these facts and circumstances of the case, by virtue of the usage of the word trade nade 'AACHI' by the plaintiffs in relation to its business, the word 'AACHI' has obtained distinctiveness. Therefore, the plaintiffs are certainly entitled for exclusive right to use the trade mark 'AACHI' in relation to the business and also entitled for injunction to restraining any other persons from using the said word 'AACHI' in relation to any other business, which the plaintiffs are not in subject line of business.
21.Now, the issue to be decided is whether the registered trade mark of the plaintiffs has been infringed by the defendant?
To answer to this question, this Court initially has to decide the following:-
(a).Whether the trade mark used by the defendant is identical with or similar to the registered trade mark of the plaintiffs?
(b). is used in relation to goods or services which are not similar to those for which the trademark is registered? and
(c) the registered trade mark has a reputation in India and the use of mark without due cause takes unfair advantage of or is 28/38 http://www.judis.nic.in C.S.No.341 of 2010 detrimental to, the distinctive character or repute of the registered trade mark.
22.The word 'AACHI' is a registered trade mark of the plaintiffs and the said word has been registered in various types of products, including as 'AACHI Masala Foods Private Limited' whereas the defendant registered its Company name as 'AACHI Cargo Channels Private Limited'. The defendant has prefixed the word registered trade mark of the plaintiffs 'AACHI' in its Company name. The plaintiffs also prefixed the word 'AACHI' in its Company name as 'AACHI Masala Foods Private Limited'. There is no doubt that the defendant's trade name is identical or similar with the trade name of the plaintiffs. As far as the use of the registered trade mark 'AACHI' by the defendant is concerned, the defendant and the plaintiffs are entirely in the different line of business.
23.With regard to the loss of reputation and distinctive characters, the plaintiffs created lot of goodwill and reputation not only in South India but also through out the world. As stated above, the plaintiffs have reached the turnover of Rs.1300 Crores in the 29/38 http://www.judis.nic.in C.S.No.341 of 2010 year 2015 and also spent substantial amount towards advertisement and therefore, the plaintiffs trade mark certainly reached the people mind and the moment when any person thought of 'AACHI', he / she will only refer the plaintiffs product. The defendant's use of the registered trade mark of the plaintiffs in its trade name is only with the intention to take unfair advantages without due cause, which would clearly amounts to detrimental to the interest of the plaintiffs registered trade mark. By virtue of the use of the word 'AACHI' by the plaintiffs in respect of its business, though the word 'AACHI' is in a descriptive in nature, it has reached the distinctiveness by virtue of the usage. Therefore, certainly the plaintiffs have exclusive right to use the word 'AACHI' in respect of not only in its business but also in respect of other business.
24. Now, the issue to be determined in the present case is when the services provided by the defendant by prefixing the word 'AACHI' in the trade name of the defendant will mislead the public or will amounts to encash the goodwill of the plaintiffs and thereby infringing the registered trade mark of plaintiffs. 30/38 http://www.judis.nic.in C.S.No.341 of 2010
25. The answer to the question will 'Yes' for the following reasons:
The plaintiffs have created the goodwill to the name 'AACHI'. They have a turnover of Rs.1300 Crores as on 31.03.2015 and also spent more than 21 Crores towards advertisement. By virtue of spending this amount for advertisement, the word 'AACHI' is very popular among the people. Apart from that, the turnover of Rs.1300 Crores is in the year 2015, now it would be much more than that, which would clearly show that the people are recognised the word 'AACHI' in respect of the product of the plaintiffs and it has reached the minds of the people substantially. If any one heard the word 'AACHI' in respect of any other products or services, immediately the people will think about the trade mark of 'AACHI' of the plaintiffs alone.
26. When such being the case, this Court is of the view that the use of the word 'AACHI' adopted as part of the trade name of the defendant is only with the intention to encash the goodwill gained by the plaintiffs. No doubt, if there is any damage to the name of the defendant's product, it will have direct bearing on the 31/38 http://www.judis.nic.in C.S.No.341 of 2010 reputation of the plaintiffs, because the name of the defendant is identical and similar to the name of the plaintiffs and therefore, the people will get confused with the name of the defendant as of the plaintiffs. Therefore, the intention of the defendant is only to encash the goodwill of the plaintiffs and thereby to reach the people and if there is any damage to the name of the defendant, it will have direct bearing on the goodwill of the plaintiffs due to the identical as well as similarity in the name of the plaintiffs as well as the defendant, though both plaintiffs and defendant are in different line of business
27.Therefore, in the present case, though the defendant is different line of business, with the mala fide intention to encash the goodwill of the plaintiffs, they have been using the word 'AACHI' and it would clearly amounts to infringement of trade mark. Therefore, using the word 'AACHI' by the defendant is clearly amounts to infringement in terms of Section 29(4) of the Trademarks Act.
28. As stated above, the plaintiffs have used the word 'AACHI' since 1995 and it is also a registered trade mark, whereas the 32/38 http://www.judis.nic.in C.S.No.341 of 2010 defendant has been using this word along with its trade name from the year 2008 and hence, the plaintiffs are prior user of the Trademark 'AACHI'. The plaintiffs have registered the word 'AACHI'. The defendant has not obtained any registration with the Registrar of Trademark and therefore, the plaintiffs are the registered proprietor of the word 'AACHI'. The use of the word 'AACHI' by the defendant in his trade name is clearly amounts to passing off its goods as that of the plaintiffs and therefore, it clearly amounts to infringement of trade mark of the plaintiffs.
29.Therefore, certainly the plaintiffs are entitled for the permanent injunction against the defendant from manufacturing, selling, advertising, offer for sale under the trade name 'AACHI Cargo Channels Private Limited'. Accordingly, the issue Nos. 1 to 5 are answered.
Issue No.(vi) and (vii)
30. In view of the finding to additional issues 1 to 5, this Court is of the view, that the plaintiffs are entitled for the direction against the defendant to surrender to the plaintiffs all packing material, cartons, advertisement materials and hoardings, letter 33/38 http://www.judis.nic.in C.S.No.341 of 2010 heads, visiting cards, office stationery and all other materials containing the name of “AACHI”.
31.The plaintiffs are also entitled for the directions against the defendant to render accounts and profit made by it by using the impugned trademark. Accordingly, this Court directs the defendant to submit the accounts and profits made by him using the impugned trademark from 2008 to till date within a period of three months from the date of receipt of a copy of this order. Accordingly, the issue Nos.(vi) and (vii) are answered in favour of the plaintiffs.
32.The defendant in the written statement has sought for rectification on the basis of the illegal use of the trademark AACHI by the plaintiff, but in view of the finding that the plaintiffs are proprietor of trademark AACHI and in view of the fact that the registration of the trademark AACHI, as discussed in the previous issues, the plaintiffs are entitled to use the said mark AACHI in relation to the business. The present trademark obtained by the plaintiffs only in relation to its business and the plaintiffs have introduced this word AACHI first to the business world. Taking into 34/38 http://www.judis.nic.in C.S.No.341 of 2010 consideration of these aspects, the Registrar trademark granted the registration and this Court does not find any illegality in granting the trademark AACHI in favour of the plaintiffs. Further, for any rectification, the defendant can move rectification application before the intellectual property appellate Tribunal under Section 57 r/w under Section 125 of the trademark Act, 1999. In view of the finding of this Court for the other issues, this Court has no hesitation to hold that the plaintiffs are the pioneer and the first person to introduce the word AACHI to the business world, and therefore, the plaintiffs are entitled to get the registration of the word AACHI in relation to the business. Accordingly, the Registrar of the trademark granted registration. This Court does not find any illegality in granting the registration. Accordingly, counter claim of the defendant is not sustainable.
33.In view of the above finding this Court, pass the following judgment and decree:
A. The plaintiffs are the registered proprietor of the word AACHI .
B. The plaintiffs are the pioneer in introducing the word AACHI into the business world and accordingly, they are entitled to use the 35/38 http://www.judis.nic.in C.S.No.341 of 2010 word AACHI in relation to the business. Hence, they have exclusive right to use the word AACHI in relation to the business of the plaintiffs.
C. By virtue of using of the word in relation to the various business by the plaintiffs, the plaintiffs obtained the distinctiveness for suggestive word 'AACHI' in relation to the business and therefore, the plaintiffs are entitled to use the word exclusively in relation to its business.
D. The defendant's trademark is similar and deceptively identical or similar to the registered trademark of the plaintiffs.
E. The use of the word 'AACHI' by the defendant is clearly amount to infringement in terms of Section 29(4) of the Trademarks Act and with the mala fide intention, the defendant has been passing off their goods / services as that of the plaintiffs.
F. This Court granted permanent injunction against the defendant from manufacturing, selling, advertising and offering for sale in the trade name 'AACHI Cargo Channels Private Limited'. 36/38 http://www.judis.nic.in C.S.No.341 of 2010 G. This Court directed the defendant to surrender the packing materials containing in the name of 'AACHI' and also for the rendition of accounts and profit made by the defendant by using the impugned trade mark, to the plaintiffs.
H. Cost of the suit.
34. Accordingly, the suit is decreed, as prayed for.
29.11.2019 AT 37/38 http://www.judis.nic.in C.S.No.341 of 2010 KRISHNAN RAMASAMY,J.
rj2 C.S.No.341 of 2010 29.11.2019 38/38 http://www.judis.nic.in