Madras High Court
M/S.N.A.Thiagarajan And Sons vs Venkateshwara Camphor Works (2001(1) ... on 19 December, 2012
Author: Vinod K.Sharma
Bench: Vinod K.Sharma
IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 19/12/2012 CORAM THE HON'BLE MR.JUSTICE VINOD K.SHARMA O.A.No.642, 643 and 644 of 2012 in C.S.No.513 of 2012 N.A.THANGARAJAN AND SONS A PARTNERSHIP FIRM, REP.BY ITS PARTNER A.THANGARAJAN, HEAD OFFICE AT NO.330, THEPPAM WEST BAZAAR, VIRUDHUNAGAR 626 001. VS M/S.1ST CHOICE FOOD PRODUCTS REP.BY ITS PARTNER A.THANASEKARAN, NO.120/1, MADURAI ROAD, VIRUDHUNAGAR ORDER
M/s.N.A.Thiagarajan and Sons, a partnership firm has filed this application under Order XXIV Rule 8 of O.S. Rules read with Order 39 Rule 1 and 2 of C.P.C. for grant of temporary injunction restraining the respondents by themselves, or their men, partners proprietors, stockists, dealers, servants, agents, franchisees, successors in interest, licensees, assignees, representatives or any of them from in any manner infringing the applicant's copyright over the artistic work in the label "HANUMAN" by use of the device Hanuman with the Sanjeevi Hill in his hands in flying posture in "CHETTINAD" label or nay device deceptively similar to that of the applicant's artistic work by use of identical or deceptively similar trading style and/or artistic work in any other manner whatsoever pending disposal of the above suit.
2 The plaintiff/applicant has filed a suit under Order IV Rule 1 of the O.S. Rules read with Order VII Rule 1 of C.P.C. Read with Sec.27, 28, 29, 134 and 135 of Trademark Act, 1999 read with section 51, 55, 62 of Copyright Act, 1957.
3 The plaintiffs/applicants are dealing in purchase and sale of groundnut kernel and manufacturing and sale of groundnut oil, Oil cake, Palmoil, etc. One of the major goods dealt in by the plaintiff is groundnut oil which is sold under trademark "HANUMAN" Groundnut oil and other edible oils.
4 Mr.A.Thangarajan, one of the partner of the firm started groundnut oil business and later, inducted his brother to run the business in partnership in the name and style of N.A.Thiagaraja and Bros. The firm adopted the trademark "Hanuman" with the picture of Hanuman with Sanjeevi Hills in flying pose.
5 The firm filed trademark application to register the trademark vide Application No.426263 in respect of the groundnut oil (edible oil). The edible oil is included in class 29 for registering the Trade Mark "Hanuman" with the picture of the Hanuman with Sanjeevi Hills in flying pose.
6 The partnership firm was reconstituted on 15.3.2000 and T.Sivakumar, S/o Thanasekaran was inducted as partner of the partnership firm. On 1.4.2000, the partner A.Thanasekaran, retired from the partnership firm and executed the release deed in favour of A.Thangarajan and T.Sivakumar by releasing the entire right over the Trade Mark "Hanuman" brand and label and agreed to transfer the registered trade mark No.426263 in class 29.
7 The partnership firm continued to run with the remaining partners as per partnership deed dated 1.4.2000. The partnership firm was again reconstituted and T.Sunilkumar, S/o Thangarajan, the present partner of the plaintiff's firm was inducted as a partner vide deed dated 15.3.2001. Later, the other partner, T.Sivakumar, S/o A.Thanasekaran, the partner of the defendant's firm retired from the partnership firm and executed the release deed relinquishing his right over the trade mark "Hanuman" brand and label and agreed to transfer the registered Trade Mark No.426263 in Class 29.
8 The partner of the defendant's firm A.Thanasekaran and Mr.T.Sivakumar sworn an affidavit dated 29.9.2001 that they had relinquished their rights over the registered Trade Mark No.426263 in Class 29 and filed no objection to transfer the trademark in favour of the present partners.
9 The partnership firm was continued by A.Thangaraj and T.Sunikumar, thereafter on 1.4.2005. T.Sathishkumar, S/o Thangaraj was inducted as a partner of the plaintiff firm. The plaintiff also filed other trade mark application for registration of their trade mark Application No.1460888 and 1854910 in class 29.
10 That the partners of the defendant firm, A.Danasekaran and T.Sivakumar filed an affidavit on 29.9.2001 that they had relinquished their rights over the registered trademark in Application No.426263 in class 29 and had no objection to transfer the trademark in favour of the plaintiff.
11 The plaintiff has given turnover and sales of firm as under:
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Year SALES TURNOVER IN Rs.
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2003-04 40058012
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2004-05 54703851
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2005-06 49594084
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2006-07 50475038
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2007-08 83702560
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2007-08 83702560
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2008-09 90762826
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2009-10 75069318
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2010-11 75169574
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12 That it is submitted that the exclusive statutory and common law rights vest absolutely with the plaintiff and no on else. The plaintiff states that while so, the reputation of the plaintiff over the "Hanuman" brand, having reached the unique heights, the plaintiff came across, the goods of the defendant under the Trade name "Chettinad" with the deceptively similar device of Hanuman with the Sanjeevi Hill in his hands in flying pose in the market, during October 2009.
13 The plaintiff submits that on enquiry it came to know that the partners of the defendant's firm are the erstwhile partners of the plaintiff firm and are the brother and the brother's sons of the plaintiff's partners A.Thangaraj.
14 Though the defendant has chosen the different Trade Mark "Chettinad", but dishonestly adopted the device of Hanuman with the Sanjeevi Hill in his hands in flying pose. That it is a clear attempt of the defendant to capitalise on the hard earned reputation of the plaintiff over the "Hanuman" brand by copying the device Hanuman with the Sanjeevi Hill in his hands in flying pose.
15 The plaintiff issued a cease and desist notice dated 20.10.2009 to the defendant on receipt of the notice defendant issued the vexatious reply stating that the Trade Mark "Hanuman" and "Chettinad" are different and there is no chance of confusion by the customers.
16 It is the case of the plaintiff/applicant that use of the device Hanuman with the Sanjeevi Hill in his hands in flying pose with similar artistic work, colour scheme, layout and placement constitutes flagrant violation of the rights of the plaintiff. The construction/design of the label despite relinquishment and release of right over the trade mark "Hanuman" brand and label by the partners of the defendants, constitutes violation of copyright.
17 That having regard to the registration and reputation of "Hanuman" brand of the plaintiff, use of "Chettinad" brand with the deceptively similar device Hanuman with the Sanjeevi Hill in his hands in flying pose by the defendant is an imitation of Trade Mark.
18 The plaintiff submits that the act of the defendant constitutes infringement of Trade Mark and passing off of the goods of the defendant as and for that of the plaintiff's. Besides, having regard to the absolute ownership of Copyright of "Hanuman" brand label, the plaintiff contends that the reproduction of the essential artistic features of the plaintiff's laebl by the defendant is an act of infringement of Copyright vested in the plaintiff.
19 The plaintiff's brand is "Hanuman" with the device of Hanuman with the Sanjeevi Hill in his hands in flying pose which represent the plaintiff's Trade mark but the defendant's Trade Mark is "Chettiand" and that use of the device Hanuman with the Sanjeevi Hill in his hands in flying pose is otherwise also no way connected with the defendant's Trade Mark.
20 The defendant is malafidely using the device only to mislead the customers and believe that their product is also of the plaintiff's firm which is not true.
21 That the defendant by the using deceptive device of hanuman with the Sanjeevi Hill in his hands in flying pose cause confusion in the minds of end consumers.
22 The defendant knowing very well about the reputation of the plaintiff's Trade Mark "Hanuman" for edible oils adopted the deceptive device Hanuman with the Sanjeevi Hill in his hands in flying pose for the edible oils, their product. The adoption of the identical device Hanuman with the Sanjeevi Hill in his hands in flying pose for the edible oil the product which is sold in the same area and the shops only to create confusion in their minds of end consumers so as to sell their products on the reputation and good-will gained by the plaintiff and pass off their "Chettinad" edible oil as and that of the "Hanuman" groundnut oil of the plaintiff.
23 The act of the defendant in trading the edible oils under the deceptive device Hanuman with the Sanjeevi Hill in his hands in flying pose is unlawful which constitute the act of infringement of the registered Trade Mark "Hanuman" of the plaintiff.
24 Furthermore, in view of the fact that the plaintiff has adopted and used the Trade Mark "Hanuman" brand for the edible oils right from the year 1976 and has taken strenuous efforts to popularize the brand, the act of the defendant also constitute the tort of passing off of their edible oils as and for the edible oils of the plaintiff.
25 The plaintiff alleges that the adoption of device Hanuman with the Sanjeevi Hill in his hands in flying pose by the defendant in respect of edible oils is wilful and waton just to defame and dilute the popular Trade Mark of the plaintiff.
26 It is also to be submitted that selling identical products like edible oils under the Trade Mark "Chettinad with the deceptive device Hanuman with the Sanjeevi Hill in his hands in flying pose is not an accident but a deliberate and malicious act aimed at tarnishing the reputation and taking advantage of goodwill of the plaintiff acquired in four decades.
27 That the act of the defendant has resulted in serious loss and hardship to the plaintiff since the defendant had infringed the Trade Mark of the plaintiff. The customers built up by the plaintiff over the years are buying the goods of the defendant as if they are buying the goods of the plaintiff, as a consequence of which there is immense confusion in the mind of buyers in the market. Therefore, unless the defendant is restrained by an order of this Court, the plaintiff would continue to suffer and the defendant would continue with their unlawful activity undeterred. No amount of pecuniary compensation at a future date would be enough to compensate the loss and agony suffered by the plaintiff.
28 That the defendant is not altogether a third part, he is erstwhile partner of the plaintiff firm and on retirement had relinquished his rights on the trade mark, and after retirement is malafidely adopting the mark, despite receipt of cease & desist notice. The defendant is continuing with his unlawful activities. The continued misuse of the plaintiff's registered Trade Mark result in erosion of profits and dilution of brand value of the plaintiff.
29 The plaintiff therefore is left with no other option but to file the present suit and seek an order of injunction against the infringement of his Trade Mark and Copyright.
30 The plaintiff submitted that unless this Court restrains the defendant from persisting with his unlawful activities, it will result in financial doldrums and the business which is built over the reputed Trade Mark will be brought to naught, if the activities of the defendant are not restrained by an order of injunction. No amount of compensation will be adequate at a future date.
31 The plaintiff/applicant has also placed on record the registered trademark label of the plaintiff's at page 9 of the typed set of documents, as also the registered label used by the defendant. Though the defendants/non applicants are marketing the same product under the trademark "Chettinad", but are using picture of Hanuman which is deceptively similar to that of the plaintiff/applicant. Thus, the defendants have infringed the registered trademark of the plaintiff/applicant by using label which is deceptively similar to that of the plaintiff/applicant.
32 Counter affidavit has been filed where the plea taken by the defendant is that Mr.A.Danasekaran is not a partner of the defendant/non applicant's firm and nothing to do with the non applicant's firm. T.Sivakumar and his mother Tmt.T.Usha are the only partners of 1st Choice Products, i.e. respondent firm.
33 It is submitted that this Court has no jurisdiction to try the case, as the party to the proceedings are outside the jurisdiction and no cause of action for filing the suit occurred within the jurisdiction of this Court. This plea deserves to be noticed to be rejected, on the ground that it is not disputed that the trademark of the plaintiff/ applicant was registered at Chennai. Therefore, for infringement of trademark, the suit is maintainable in this court.
34 The plea of the defendant that no cause of action has arisen within the jurisdiction of this Court and that the applicant has not shown single sale of the defendant's product in Chennai, cannot advance the case of the defendant/non applicant.
35 The defendant/non applicant has also denied that the defendant relinquished the right over the trademark "Hanuman". The registration of trademark in favour of the plaintiff/applicant is challenged by M/s.Raghurav (India) Ltd. of Jaipur, Rajasthan which is pending adjudication before the Trade Marks Registry, Chennai. A.No.MAS 259530 has been filed by M/s.Ragurav (India) Ltd. of Jaipur, Rajasthan claiming that it is the original proprietor and prior adopter of the trade mark "Hanuman" in which the plaintiff/applicant does not have exclusive right.
36 It is also the case of the defendant/non applicant that another application No.1460888 filed by the plaintiff/applicant for registration of the device "Hanuman" is opposed therefore, he cannot maintain the present application.
37 The main defence of the respondent is that "Hanuman" is mythological god worshipped by scores of Hindus throughout the globe. Lot of business people in India have adopted the word "Hanuman" and the device of "Hanuman" in various poses as their trade marks. Hanuman carrying Sanjeevini hill in his hand is a common portrait found in several temples and religious books. The original author of the said artistic work is unknown. It is submitted that the plaintiff is required to prove in this Court that it is the owner of the artistic work in absence of such a proof, the suit as framed is not competent.
38 It is also the case of the defendant/non applicant that the device of Hanuman has become "public juris" i.e. common to the public and nobody can claim exclusive right over it.
39 It is contended that the grant of registration of a mark containing the picture of "Hanuman" or the word "Hanuman" is against the provisions of Trade Marks law. The defendant/non applicant has also disputed the sales figures shown by the plaintiff/applicant.
40 The stand of the defendant/non applicant is that the respondent is using a brand name "Chettinad" and not "Hanuman" which shows that the marks are different, the question of infringement therefore does not arise, as there is no likelihood to the customer being misled to buy "Chettinad", instead of the product of plaintiff.
41 The defendant/non applicant also denied the act of infringement of Trademark of goods, on the plea that the applicant does not have absolute ownership of copyright over "Hanuman" brand label, nor its essential artistic features vest with the plaintiff/applicant.
42 The learned counsel for the plaintiff/applicant vehemently contended that the plaintiff and the defendant are in the same business running from the same place and at one stage, the partner of the respondent firm was associated with the plaintiff.
43 That the bare look at the label of the plaintiff/ applicant and that of the defendant/non applicant would show that though defendant/non applicant's product is marketed under the brand name "Chettinad", but still using photographs of "Hanuman" which is deceptively similar to that of the plaintiff's trademark may mislead customer to believe the goods of the defendant/non applicant to be that of the plaintiff/applicant.
44 In support of the application, the learned counsel for the plaintiff/applicant placed reliance on the judgment of this Court in R.Gopalakrishnan vs. Venkateshwara Camphor Works (2001(1) CTR 279 (Madras) wherein the this Court was pleased to lay down as under:
"24. But in all these cages, the question of infringement is for the Judge to decide and the eye of the Judge is the final umpire. I have already referred in the paras above as to how even the collocation of words and in fact the actual words used are almost identical in both the cartons. In a similar case reported in Munday v. Carey, 1905 (22) R.P.C. 273, Chancery division, the learned Judge had to consider whether "Hub-black Enamel" containing device of a ace of spades was an infringement of the trademark of the makers of "Club-black Enamel" which bore the device of ace of clubs. The learned Judge granted injunction though clubs and spades were dissimilar on the ground of similarity in collocation of the words and the same is reproduced here:
Kekewich.J. at pp.275-276: "But then I find that on the centre part of the plaintiffs' label is this:"Most Brilliant and Durable;dries quickly". The defendant had: "Brilliant and durable; dries quickly'. Now, of course, the defendant is entitled to say that his enamel is brilliant and durable and dries quickly; but one cannot help being struck by the exact collocation of words in both cases, and it is strange that the defendant, desiring to advertise his goods in this way, should not only have thought of the adjectives brilliant and durable, and of the statement that it "dries quickly", but he should have put 'brilliant' first and "durable" afterwards, and "dries quickly" after both. The Suggestions is that that is accidental. I do not believe it. Then on the right hand of that centre part, there is on the plaintiffs "Equals stoved enamel in hardness, durability and appearance". On the other there is "Equals stoved enamel in hardness, durability and appearance", the very words following each other in the same order, I am told that is accidental. Again I do not believe it I believe that it is a rank case of dishonesty, and where you see dishonesty, then even though the similarity were less than it is here, you ought, I think to pay great attention to the items of similarity, and less to the items of dissimilarity."
25. This is identical to the instant case. The defendant's choice of the words (Editor: The text of the vernacular matter has not been matter is required.) etc., ....... or "you have in them the lustre of the sun with the grace of divinity", and the get-up and the collocation of the words and colour are not purely accidental. Infact as in Enamel case the sequence in which these words occur and the placement are identical. As Lindlev. J observes, why should this Court not say he has succeeded in doing what he is straining every nerve to do. I think the dishonesty speaks for itself. Perhaps, this is why the defendant did not chose to get on to the box. The learned Judge erred in dismissing the suit."
45 Reliance also placed on the judgment of this Court in K.R.Chinna Krishna Chettiar vs. Ambal and Co. Madras and another (PTC (Suppl)(1) 258 (SC) wherein the Hon'ble Supreme Court was pleased to lay down that although there is visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal. The word "Sri' may be regarded as in common use. The distinguished feature of the respondent's mark is Ambal while that of the applicant's mark is Andal. The two words are deceptively similar in sound. However, this judgment cannot be of any help to the plaintiff/applicant, as in the present case, the word used by the plaintiff, i.e. "Hanuman" is different to that of the word "Chettinad" used by the defendant.
46 Reliance was thereafter placed on the judgment of the Hon'ble High Court of Delhi in Prakash Roadline Ltd. Vs. Prakash Parcel Service (P) Ltd. (PTC (Suppl)(2) 177(Del) wherein the Hon'ble Delhi High Court was pleased to lay down that merely because a particular name is part of name of the defendant, injunction cannot be refused in favour of the plaintiff who had been using the name much prior to the defendant and had established itself by that name in the trade. It was laid down by the Hon'ble Delhi High Court that:
"The defendant has been floated by ex Directors/employees of the plaintiff there is no dispute. Therefore, prima-facie the use of the word 'Prakash' in the name of the defendant does not appear to be bonafide. The use of the said word is prima-facie likely to create an impression in the mind of the clients that the defendant company belongs to the same group that is plaintiff's group, thus causing confusion in the mind of the clients and is likely to affect the business of the plaintiff adversly. The defendant is trying to justify the use of the word 'Prakash' on the basis of the fact that the same is part of the name of the promoters of the defendant company who in fact is stated to be the promoter of the plaintiff company itself. However, since the plaintiff company has by the use of word 'Prakash' in its name over a long period of time prima-facie acquired a right to use the said name, the defendant can not be permitted to carry on the same business under a similar trade name. Therefore, prima-facie, I hold that the word 'Prakash' has acquired a secondary meaning for the plaintiff in the trade on account of its use by the plaintiff over a long period of time and the use of the word 'Prakash' in the name of the defendant is not bonafide.'
47 Reliance was also placed on the judgment of the Hon'ble Delhi High Court in Pernod Ricard S.A. France and another vs. Rhizome Distilleries Pvt. Ltd. and others (MIPR 2009(1) 0112) wherein the Delhi High Court was pleased to lay down that the prior users and proprietors of the trade mark "Imperial Blue and "Royal Stag" could challenge the adoption of trade mark "Imperial Gold" by using the trade dress, get up, colour combination and label of "Royal Stag". It was held that it amounted to infringement of trademark and passing off.
48 The Hon'ble Delhi High Court in that case was pleased to lay down as under:
"39. To conclude, even proceeding on the assumption that the purchasers of the defendants' product are discerning persons with proper knowledge of the liquor market and the brands available on the counter, I have no hesitation in holding that the plaintiffs have made out a prima facie case for the grant of an injunction order in their favour and against the defendants. Keeping in view the comparable strength of their case, grave and irreparable loss is likely to ensue to the plaintiffs in case interim protection is not granted in their favour CS(OS) 2314/2008 Page No. 32 of 34 and against the defendants. The injunction, in my view, is also imperative keeping in view the dishonest adoption of the mark and trade dress of the plaintiffs' product by the defendants and the larger interest of the consumers of the product. It is not inconceivable that sub-standard whisky may prove to be even more injurious than a sub-standard medicinal or pharmaceutical product, and may lead to lethal consequences, even wholesale disastrous ones. The balance of convenience also clearly tilts in favour of the plaintiffs and against the defendants. Both in justice and equity, the plaintiffs must be held entitled to the injunction prayed for by them."
49 The contention of the learned counsel for the plaintiff therefore was that plaintiff/applicant has successfully proved that using of the picture of Hanuman in flying pose along with Sanjeevi hill is deliberate and malafide attempt to infringe the trademark of the plaintiff/applicant.
50 The learned counsel for the defendant/non applicant opposed the applications by vehemently contending, that the registration of trademark of the plaintiff/applicant is under challenge and therefore, plaintiff cannot claimed to be the proprietor of the trade mark.
51 It was also contended that the defendant/non applicant has not infringed the trade mark of the plaintiff/applicant, as it marketing its product under the trade name "Chettinad" which is not similar to the trademark "Hanuman".
52 It was the contention of the learned counsel for the non applicant that the plaintiff/applicant cannot have grievance to the use of picture of Hanuman inflying pose with Sanjeevi hill, as it is not artistic work of the plaintiff/applicant. That Hanuman is a God of Hindus and therefore, it is not open to the plaintiff/applicant to claim any right or to challenge the sale by the defendants of their products with picture of Hanuman on it.
53 In support of this contention, the learned counsel for the defendant/non applicant placed reliance on the judgment of the Hon'ble Delhi High Court in Bhole Baba Milk Food Industries Ltd. Vs Parul Food Specialities (P) Ltd. (2011(45) PTC 217 (Del.) wherein the Hon'ble Delhi High Court was pleased to lay down that the word "Krishna" is a common name, i.e. name of a god/deity that is Lord "Krishna" and is being used by several manufacturers for similar goods both prior to year 1993 and thereafter. The mark "Krishna" is descriptive of the Hindu God and his association with milk products. The plaintiff's claim to monopoly over the mark "Krishna" therefore, is not correct. It was held that sales alone does not transcend in attaining of secondary meaning/distinctiveness of the mark, which in present context is a common name/deity's name for the plaintiff to monopolize its use to the exclusion of others.
54 The Hon'ble Delhi High Court was pleased to hold that the plaintiff failed to establish its secondary meaning/distinctiveness for the mark "Krishna", as substantial changes were incorporated in the label mark of the defendant in so far as colour scheme and pictorial representation are concerned to allay any fears of confusion/deception of a reasonable and prudent customer.
55 On consideration, I find that the application deserves to succeed. It is not in dispute that trademark of the plaintiff is registered though under challenge. It is also doing business of groundnut oil with the registered trademark. It is also not in dispute that both the defendant and plaintiff are doing business in the same product. Though it cannot be disputed, that nobody can monopoly to use picture of Hanuman, but in the present case, it will be noticed that the defendant/non applicant is marketing its product under the trade name "Chettinad" by using picture of Hanuman which is deceptively similar to that of the plaintiff.
56 Judgment relied upon by both counsel lead to one conclusion that question of infringement is to be decided by the Judge on the pleadings and the documents placed on record.
57 The visual look at the label of both parties shows that the labels are identical, as the figures of Hanuman used is identical. The label used by the defendant prima facie is similar to that of the plaintiff's label which may lead to customer believing the product "Chettinad" also to be product manufactured/marketed by plaintiff/ applicant.
58 For the reasons stated, the applications in O.A.No.642, 643 and 644 of 2012 are allowed. Ad-interim injunction is granted in favour of the plaintiff against the defendants as prayed for till disposal of the suit.
No costs.
vaan