Bangalore District Court
; M/S Mtr Foods Private Limited vs ; 1. M/S Bambino Agro Industries Limited on 31 January, 2015
IN THE COURT OF XVIII ADDL. CITY CIVIL JUDGE
AT BENGALURU CITY [CCH NO.10]
Dated this day the 31st January, 2015
PRESENT
SRI K.AMARANARAYANA., B.Com., LL.M.,
XVIII Addl. City Civil and Sessions Judge.
O.S.No.5380/2012
Plaintiff ; M/s MTR Foods Private Limited.,
A Company incorporated under Companies
Act, 1956 having its Regd. Office at,
No.4, 17th Cross, K.R.Road,
Banashankari, 2nd Stage,
B A N G A L O R E - 560070.
Represented by its Company Secretary,
A.Chandrashekara Alse,
Aged about 53 years,
[Rep.By.Sri.H.S.H Advocate for plaintiff]
--V/S--
Defendant ; 1. M/s Bambino Agro Industries Limited,
No.4E, Surya Towers, S.P.Road,
S E C U N D E R A B A D - 500003.
Andhra Pradesh,
Represented by its Managing Director.
[Rep.By.Sri.C.P.G Adv for defendant]
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Date of institution of suit ; 26.07.2012.
Nature of the suit [Pronote, ; Permanent Injunction.
Suit for declaration and ; Render Accounts &
Possession, suit for Injunction Damages.
etc]
Date of the commencement ; 11.03.2014.
of recording of the evidence
Date on which the judgment ; 31.01.2015.
was pronounced.
Total Duration ; Year/s Month/s Day/s
02 06 04
(K.AMARANARAYANA)
XVIII Addl. City Civil Judge, Bengaluru.
JUDGMENT
The plaintiff filed this suit against the defendant prays to pass judgment and decree of permanent injunction restraining the defendant, their servants, agents or anyone claiming through it in any manner infringing the plaintiffs well established trademark 'JUST ADD RICE' registered under No.1342716 along with its pouch used for packing Puliyogare Mix by the defendant by using deceptively similar copyright JUST ADD RICE and passing off trade
--3-- O.S.No.5380/2012 mark JUST ADD RICE under brand name BAMBINO adopted by defendant as and for plaintiffs well established copyright/trademark JUST ADD RICE under brand name MTR in so far it relates to manufacturing and marketing of food products, to direct the defendant to surrender to them entire stock of unused offending pouches, bills, negatives, positives, transparencies, blocks for destruction, to direct the defendant to render honestly and faithfully true account of the profit that they have derived by promoting their company by using offending copyright/trademark and directing payment of such profits to the plaintiff by way of damages for infringing the copyright of plaintiffs and for costs.
2. Case of the plaintiff in brief is as follows;
The plaintiff is a Public Limited Company incorporated under Companies Act, 1913. The plaintiff company is a reputed fast moving consumer company. It has been engaged in the business of manufacture and distribution of varieties of food products such as instant food mixes, spices and masalas, ready to eat foods and other products under the trademark MTR for a long time. They have also obtained registration of its trademark MTR throughout the world under various classes. During October 2002 they adopted trademark "MTR JUST ADD RICE for Puliyogare Mix" with a particular
--4-- O.S.No.5380/2012 artistic work, design and get up. They registered the trademark registration No.1342716 in Class-30 for "MTR PULIYOGARE POWDER Mix JUST ADD RICE". The trademark came to be registered on 14.1.2008 under certificate No.666333 in Class-30 of the said Act. They have exclusive right to use the trademark. They have also made application for registration of trademark JUST ADD RICE in Class-29 and 30 and the same are pending. The defendant is a company engaged in the manufacture and marketing of food products which interalia includes VERMICILLI and other food products and has adopted JUST ADD RICE along with its trademark BAMBINO. The defendant has slavishly adopted the colour scheme, get-up and layout of them. It is evident that both are identical and thereby the defendant has infringed their copyright and the trademark. The defendant has no authority to adopt the similar trademark and passing off their product JUST ADD RICE under the brand name BAMBINO. Hence, this suit is filed for the above relief's.
3. The defendant filed written statement denying all the assertion of the plaintiff and contended that their company incorporated in the year 1982 with the object of manufacturing and marketing interalia foods, food products, instant mixes relating to food preparations. The credit of introducing vermicelli to the Indian
--5-- O.S.No.5380/2012 Markets in the year 1982 and effectively marketing the said product under their brand name BAMBINO. With changing need of consumers, they have been adding a number of value added products to its products line on a continuous basis i.e. Fast Moving Consumer Goods under the said trademark. They have adopted a unique design depicting the device of a 'BELL' and their mark BAMBINO and invested substantial money in promoting the goods under their trademark. The design, layouts, colour schemes and the placements of devices contained on the pouches in which they pack their goods being designed by various advertisement agencies engaged by them for the said purpose. The plaintiff is a new entrant into the business of Fast Moving Consumer Goods. The expression 'JUST ADD RICE' cannot serve as a trademark and it can at best be a part of the instructions to use the products said to be sold under the receptacle in which the said food products are packed and sold. As such, the expression cannot be claimed to have been invented by the plaintiff. The plaintiff cannot claim exclusive rights over the individual component JUST ADD RICE. Mere filing application for registration does not create any right to the plaintiff. On the above grounds prays to dismiss the suit.
4. Based on the above pleadings the predecessor in office
--6-- O.S.No.5380/2012 framed the following issues;
1. Whether the plaintiff proves that the defendant has infringed its trademark "JUST ADD RICE" by using "JUST ADD RICE" with trademark BAMBINO?
2. Whether the plaintiff is entitled for the reliefs as sought for?
3. To What decree or order?
5. The plaintiff in order to prove its case got examined its authorized signatory as PW1, got marked Ex.P1 to Ex.P16, and closed its side. The defendant to prove its defendant has examined its authorized signatory as DW1, got marked Ex.D1 to Ex.D5 and closed its side.
6. Heard the arguments on both sides. The learned counsel Sri.C.P.G appearing for the defendant filed written arguments. The learned counsel Sri.H.S.H appearing for the plaintiff filed reply on defendants written arguments. The learned counsel appearing for the plaintiff has relied upon the following decisions.
1. AIR 1960 SC 142 (M/s Corn Products Refining Oil
-V/s- M/s Shangrila Food Products Pvt Ltd).
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2. AIR 1969 MADRAS 126 (M/s Andhra Perfumery Works Joint Family Concerns -V/s- Mr.Karupakula Suryanarayanaiah and others).
3. 1986 PTC 235 (Globe Super Parts -V/s- Blue Super Flame Industries and another).
4. 1993 PTC 75 (Del) (F.M.Diesels Ltd -V/s-
S.M.Diesels).
5. 2001 PTC 676 (Del) (Bhagawan Dass Gupta (alias Agarwal) - V/s- Shiv Shankar Tirath Yatra Company Pvt. Ltd).
6. 2005 (30) PTC 63 (Del) (Society des Products NESTLE S.A & Another -V/s- Gopal Agencies & others).
7. 2010 (43) PTC 311 (Del) (Three-N-Products Pvt Ltd -V/s- Holistic Health Care Pvt Ltd).
8. 2010 (44) PTC 103 (Del) (Eicher Good earth Pvt Ltd -V/s- Laxman Marketing Pvt Ltd and others).
The learned counsel appearing for the defendant has relied upon the following decisions.
1. AIR 2005 Supreme Court 439 (Janki Vashdeo Bhojwani and another -V/s- Indusind Bank Ltd).
2. ILR 2005 KAR 4370 (Kaju Devi & Another -V/s-
H.S.Rudrappa Alias Rudy and others).
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3. 2006 (32) PTC 1 (SC) (Dhodha House & Patel Field Marshal Industries -V/s- S.K.Maingi and P.M.Diesels Limited).
4. 2014 (59) PTC 484 (Bom) (Ultratech Cement Limited and Another -V/S- Dalmia Cement Bharat Limited).
5. 2008 (36) PTC 168 (Del) (Cadila Healthcare Ltd - V/s- Gujarat Co-Operative Milk Marketing Federation Ltd. SUGARFREE).
Perused the written arguments filed by Sri.C.P.G advocate appearing for the defendant and the reply filed by the plaintiffs counsel and the decisions relied upon by both counsels appearing for plaintiff and the defendant in the light of facts of this case.
7. My answer to the above issues is as follows;
Issue No.1 ; Affirmative.
Issue No.2 ; Affirmative.
Issue No.3 ; As per final order
For the following reasons.
REASONS
8. Issue No.1 to 3;- The plaintiff is a private limited company incorporated under Companies Act-1956 is admitted. The
--9-- O.S.No.5380/2012 main objects to be pursued by the plaintiff company on its incorporation are to carry on the business of manufacturing and distribution of varieties of food products such as instant food mixes, spices and masalas, ready to eat foods and other products under trademark MTR for a long time besides obtaining the trademark MTR in India is not seriously disputed by the defendant. The plaintiff is doing food products business since 1996 is not in dispute under the brand name MTR. The defendant is a company incorporated in the year 1982 under Companies Act 1956 and doing business of Fast Moving Consumer Goods under the trademark BAMBINO is not denied by the plaintiff. The plaintiff asserts that they adopted the trademark MTR with phrase JUST ADD RICE for Puliyogare Mix with a particular artistic work, design and get-up and the same is registered before the trademark registry. It is to be noted that the defendant denied the plaintiffs assertion and contended that the expression JUST ADD RICE cannot serve as a trademark and it can at best be a part of the instructions to use the products sold under their trademark MTR, and it is a coined word. The plaintiff cannot claim any exclusive right to use the same. The dispute is with relates to the use of trademark 'JUST ADD RICE' apart from the trademarks obtained by the plaintiff and defendant.
--10-- O.S.No.5380/2012
9. Let me peruse the evidence on record whether the plaintiff is registered proprietor of the phrase JUST ADD RICE along with the trademark MTR. Ex.P4 is the trademark certificate, which is not denied by the defendant evident that the plaintiff became the proprietor of trademark MTR Puliyogare Powder in Class-30 since 2005. Ex.P5 to Ex.P7 are the website extracts of trademark application filed by the plaintiff before trademark registry Chennai. Ex.P5 to Ex.P7 evident that the plaintiff applied for trademark in respect of MTR-MASALA PASTE-Tomato rice paste, MTR-MASALA PASTE Tamarind Rice/Puliyogare Powder, MTR-MASALA PASTE Biriyani Paste. Looking to the claim of the plaintiff Ex.P5 to Ex.P7 are not so relevant. Ex.P8 and Ex.P9 are relevant for consideration. Ex.P8 and Ex.P9 evident that the plaintiff applied for registration of trademark JUST ADD RICE on 12.11.2010 in respect of the goods and services detailed in Class-29 and Class-30 under trademark applications No.2053948 and 2052949. It is to be noted that the defendant relied upon Ex.D4 and Ex.D5 the status report of trademark registry, Chennai with regard to the applications filed by the plaintiff obtained on 3.8.2011 and 4.8.3011. It is well founded from Ex.D4 and Ex.D5 that the plaintiff has applied for a trademark JUST ADD RICE in respect of the food products classified under Class - 29 and 30. Ex.D4 and Ex.D5 evident that the Trademark
--11-- O.S.No.5380/2012 Registry, Chennai called upon the plaintiff to file TM-16 as goods PICKLES does not included in Class-30 and to submit response in respect of the application filed for registration in respect of the goods classified under Class-29.
10. Looking to the production of Ex.D4 and Ex.D5 it is seen that the defendant aware about the fact that the plaintiff has applied for a registration of trademark JUST ADD RICE apart from the brand name MTR. Ex.P12 and Ex.P13 are the trademark certificates under Class-29 and 30 issued by the Trademark Registry, Chennai on 9.04.2014 pursuant to the trademark application No's.2052948 and 2052949. There is nothing on record placed by the defendant to show that the trademark certificates Ex.P12 and Ex.P13 are invalid. Nothing is brought out in the cross-examination of PW1 by the defendant that the plaintiff has not complied with the objections raised by the Trademark Registry as seen from the status reports Ex.D4 and Ex.D5. Therefore, Ex.D4 and Ex.D5 will not help the case of the defendant to invalidate the trademark certificates. Thus, the trademark certificates Ex.P12 and Ex.P13 are valid, and the plaintiff became the registered user of the trademark 'JUST ADD RICE'. Ex.P12 and Ex.P13 would go to show that the plaintiff has been using the trademark 'JUST ADD RICE' since 1.10.2002.
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11. The plaintiff contended that the defendant started using the mark 'JUST ADD RICE' since 2011. The written statement filed by the defendant does not disclose the year from which the defendant is using the said mark. DW1 during his cross-examination admits that the defendant company has been using 'JUST ADD RICE' since 2011. The trademark certificates Ex.P12 and Ex.P13 prove that the plaintiff is under usage of the trademark 'JUST ADD RICE' since 2002. The admission made by DW1 is sufficient to say that the plaintiff is the prior user of trademark 'JUST ADD RICE'. Reading the admission made DW1 in the cross-examination together with Ex.D4 and Ex.D5 would go to show that the defendant had knowledge about the plaintiffs use of trademark prior to their use, and applied for registration of the trademark 'JUST ADD RICE'. Therefore the contention of the defendant that the expression 'JUST ADD RICE' cannot be serve as trademark and it can at best be a part of the instructions to use the products said to be sold under the receptacle in which the said food packed and sold cannot be accepted. Looking to the registration of trademark the claim of the plaintiff that they have invented the same is well founded. Thus, the plaintiff can claim exclusive rights over the mark JUST ADD RICE. Ex.D3 is the Tax Invoices for the years 2010 to 2013. Ex.D3 evident that the defendant doing business since under the trade name BAMBINO. There is no
--13-- O.S.No.5380/2012 dispute about the fact that the defendant doing business in the trade name BAMBINO. The dispute in respect of use of Phrase 'JUST ADD RICE' which is a registered trademark of plaintiff. Therefore the production of Tax Invoices Ex.D3 for the years 2010 to 2013 will not help the case of the defendant.
12. There is no dissimilarity in the business of plaintiff and the defendant. The trademark JUST ADD RICE used by the defendant is identical to the plaintiff's trademark. The plaintiff is a registered proprietor of the trademark in question. Apparently, the defendant has no registration of the said trademark. Admittedly, the defendant is doing business of Fast Moving Consumer Goods under the trademark BAMBINO with phrase JUST ADD RICE. Let me peruse the evidence placed on record proves that the trademark 'JUST ADD RICE' used by the defendant is deceptively similar as that of the plaintiffs trademark 'JUST ADD RICE'. The defendant is marketing the product in the trademark 'JUST ADD RICE' with dissimilar components of plaintiff's product since 2011. The plaintiff has been using the trademark since 2002. Looking to the trademarks 'JUST ADD RICE' and 'JUST ADD RICE' both the trademarks are identical and similar, and the goods manufactured by the defendant under the trademark of 'JUST ADD RICE' is likely to be sold as the
--14-- O.S.No.5380/2012 goods manufactured by the plaintiff concern having the mark 'JUST ADD RICE'. Therefore, the contention of the plaintiff that it would misled the public and put them in a state of wonderment as to the source of its origin is rendered probable. The trademark 'JUST ADD RICE' and 'JUST ADD RICE' are identical and there is every chance of public confusing the trademark and may affect the plaintiff's trade. It is clear from the evidence of PW1 that very use of identical name with similarity by the defendant in relation to the same description of services would develop confusion and deception in the minds of the purchasers and the trade. Thus, the use of unregistered trademark 'JUST ADD RICE' by the defendant which is deceptively similar to the plaintiff's trademark would amounts to unauthorized use of mark and the passing off the goods as that of plaintiff is well founded. The defendant has not been authorized to use it in relation to goods or services for which the trademark is registered.
13. It is contended by the plaintiff that the artistic work, design, get up, colour scheme, layout on the package material is exclusively belongs to them and duly protected under the Copy Right Act 1957. MO.1 and MO.2 are the pouch of plaintiff's product. MO.3 is the pouch of defendant product. The plaintiff asserts that the defendant adopted the artistic work, design, get-up, colour scheme,
--15-- O.S.No.5380/2012 layout exclusively belongs to them and thereby infringed the Copy Right of plaintiff over the package material. A perusal of MO.1 to MO.3 it is seen that both resemble in artistic work, design, get-up, colour scheme and layout. According to plaintiff, their food products became popular all over India under the trademark 'JUST ADD RICE' with attractive package as a quality food product. There is a similarity in get-up, design, colour scheme, and layout on plaintiffs product and the defendant's product. It is to be noted that the plaintiff is the prior user of trademark 'JUST ADD RICE' with artistic work on the packing. The defendant who is the subsequent user cannot adopt the artistic work of the plaintiff. There is nothing on record placed by the defendant to indicate that the artistic work finds place on the packing MO.1 and MO.2 is contrary to the packing MO3. Therefore, MO.1 and MO.2 proves that the plaintiff became the Copy Right owner over the artistic work found on the product. The evidence of PW1 and the artistic work that found on MO.3 would clear prove that the defendant has infringed plaintiffs Copy Right.
14. The plaintiff has established that trademark JUST ADD RICE which is under usage of defendant is identical and similar to its registered trademark 'JUST ADD RICE'. Thus, the defendant cannot manufacture the food product under the trade name 'JUST ADD
--16-- O.S.No.5380/2012 RICE'. Thus, there is an infringement of trademark and the copy right of the plaintiff. Therefore, the injunction restraining the defendant from manufacturing the food product shall necessarily follow. The plaintiff able to establish the infringement of its trademark and copy right by the defendant. Thus, the defendant is liable to render honestly and faithfully true account of the profit that they have derived by promoting their company by using offending copyright/ trademark and pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and copyright.
15. Looking to the overall circumstances it is clear that the plaintiff is entitled for a decree of permanent injunction against the defendant restraining the defendant, their servants, agents or anyone claiming through them from infringing and passing off the plaintiffs well established trademark 'JUST ADD RICE' as prayed. Further, there shall be a direction to the defendant to surrender to plaintiff the entire stock of unused offending pouches, bills, negatives, positives, transparencies, and blocks for destruction and to render true account of the profit earned by using the offending trademark. Hence I answered Issue No.1 to 3 accordingly and proceed to pass the following.
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ORDER
The suit is decreed with costs. The defendant, their servants, agents or anyone claiming through them from in any manner are hereby permanently restrained from infringing the plaintiffs well established Trade Mark in respect of JUST ADD RICE registered under No.1342716 along with its pouch used for packing Puliyogare Mix by defendant using deceptively similar copyright JUST ADD RICE in so far it relates to manufacturing and marketing of food products.
Further the defendant, their agents, servants or anyone claiming through them in any manner are hereby permanently restrained from passing off Trade Mark JUST ADD RICE under brand name BAMBINO as and far plaintiffs well established copyright/trademark JUST ADD RICE under brand name MTR in so far it relates to manufacturing and marketing of food products.
Further, the defendant is hereby directed to surrender to plaintiff, the entire stock of unused offending pouches, bills, negatives, positives, transparencies, and blocks for destruction.
Further, the defendant is hereby directed to render honestly and faithfully true account of the profit that they have derived by promoting their company by using offending copyright/trademark and pay such profits to the plaintiff by way of damages for infringing plaintiff's trademark and copyright.
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Draw decree accordingly.
[Prepared by me on the Laptop, Print out by the judgment writer, corrected and then pronounced by me in the open court dated this day the 31st January, 2015] [K.AMARANARAYANA] XVIII Addl. City Civil & Sessions Judge, Bengaluru.
ANNEXURES
1. No. of witnesses examined on behalf of plaintiff;
PW1 ; Prathviraja Rao.B.
2. No, of documents marked on behalf of plaintiff;
Ex.P1 ; Power of Attorney.
Ex.P2 ; Copy of Certificate of Incorporation.
Ex.P3 ; Memorandum and Articles of Association.
Ex.P4 ; Trademark Certificate.
Ex.P5 ; Status Report of Plaintiffs Trademark.
Ex.P6 ; Website Extract of Status Report of
Trademark application No.2321135.
Ex.P7 ; Website Extract of Status Report of
Trademark application No.2321142.
Ex.P8 ; Website Extract of Status Report of
Trademark application No.2052948
Ex.P9 ; Website Extract of Status Report of
Trademark application No.2052949.
Ex.P10 ; Copy of legal notice issued to Defendant.
Ex.P11 ; Reply notice given by the Defendant.
Ex.P12 ; Trademark Certificate 2051948 in Cl-29.
Ex.P13 ; Trademark Certificate 2051949 in Cl-30.
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Ex.P14 ; Trademark Certificate 1342716 in Cl-30.
Ex.P15 ; Pouch of the plaintiff in respect of MTR
Puliyogare paste JUST ADD RICE.
Ex.P16 ; Pouch of the plaintiff in respect of MTR
Puliyogare Powder JUST ADD RICE.
3. No. of witnesses examined on behalf of defendant;
DW1 ; Ravinder Pal
4. No of documents marked on behalf of defendant;
Ex.D1 ; Board Resolution.
Ex.D2 ; Memorandum and Articles of Association.
Ex.D3 ; Tax Invoices.
Ex.D4 ; Examination and Search Report in respect
Trademark No.2052949 in Cl-30.
Ex.D5 ; Examination and Search Report in respect
Trademark No.2052948 in Cl-29.
5. Material Objects marked in the case;
MO.1 & 2 ; Products of plaintiff.
MO.3 ; Product of defendant.
[K.AMARANARAYANA]
XVIII Addl. City Civil and Sessions Judge,
Bengaluru.