Madras High Court
Vennila Clothing Company vs M/S.Arrs Silks on 11 October, 2018
Author: M.Sundar
Bench: M.Sundar
IN THE HIGH COURT OF JUDICATURE AT MADRAS Reserved on : 24.09.2018 Date of Decision : 11.10.2018 CORAM THE HON'BLE MR.JUSTICE M.SUNDAR O.A.Nos.992 and 993 of 2017 and A.Nos.8280 of 2017 and 7224 of 2018 in C.S.No.775 of 2017 O.A.Nos.992 and 993 of 2017 : 1.Vennila Clothing Company, rep by its Partner, Mr.R.Nagarajan @ K.R.Nagarajan, at Ramraj Cotton, 100, Pondy Bazar, Chennai-600 017. 2.R.Nagarajan @ K.R.Nagarajan .. Applicants in both applications Vs. 1.M/s.ARRS Silks, A partnership firm No.2, Old Bangalore Road, Hosur-635 109. rep by its Partner S.Ravichandran 2.S.Ravichandran 3.M/s.Ravirams, A Proprietory Concern Proprietor S.Ravichandran, No.2, Old Bangalore Road, Hosur-635 109. No.119, 2nd Agraharam, Salem-636 001. .. Respondent in both applications A.Nos.8280 of 2017 and 7224 of 2018 : 1.M/s.ARRS Silks, A partnership firm No.2, Old Bangalore Road, Hosur-635 109. rep by its Partner S.Ravichandran 2.S.Ravichandran 3.M/s.Ravirams, A Proprietory Concern Proprietor S.Ravichandran, No.2, Old Bangalore Road, Hosur-635 109. Showroom at No.119, 2nd Agraharam, Salem-636 001. .. Applicants in both applications Vs. 1.Vennila Clothing Company, rep by its Partner, Mr.R.Nagarajan @ K.R.Nagarajan, at Ramraj Cotton, 100, Pondy Bazar, Chennai-600 017. 2.R.Nagarajan @ K.R.Nagarajan .. Respondents in both applications O.A.No.992 of 2017 is filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 and 2 CPC seeking to grant interim injunction restraining the respondents / defendants by themselves or their men, partners, proprietors, stockiest, dealers, servants, agents, franchisees, successors in niterest, licensees, assignees, representatives, branches or any of them claiming through or under them from in any manner infringing the plaintiffs copyright over the artistic work, colour scheme, layout, get-up and lettering style, trade dress in the registered label 'RAMRAJ by use of RAVIRAM's label with or without the RR Logo or any mark / label deceptively similar to that of the plaintiffs artistic work / label or by use of identical or deceptively similar trading style and / or artistic work or in any other manner whatsoever and pending disposal of the above suit. O.A.No.993 of 2017 is filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 and 2 CPC seeking to grant interim injunction restraining the respondents/ defendants by themselves or their men, partners, proprietors, stockiest, dealers, servants, agents, franchisees, successors in interest, licensees, assignees, representatives, branches or any of them claiming through or under them from in any manner violating the statutory and common law rights of the plaintiffs by use of Trade Dress of the plaintiff or deceptively similar Trade Dress by the respondents employing identical or deceptively similar trade mark and or trade dress with or without the trade mark 'RAVIRAM'S / RR LOGO. or any other deceptively similar trade mark in respect of the goods and services of the plaintiffs or by use of identical or deceptively similar label, packing materials/ cartons or in any other manner whatsoever and pending disposal of the above suit. A.No.8280 of 2017 is filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 4 CPC seeking to vacate the injunction restraining the applicants from selling dhoties and shirts under its trade mark RAVIRAM's granted in O.A.No.992 of 2017 in C.S.No.775 of 2017 dated 09.10.2017 and pending disposal of the above suit. A.No.7224 of 2018 is filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 4 CPC seeking to vacate the injunction restraining the applicants from selling dhoties and shirts under its trade mark RAVIRAM's granted in O.A.No.993 of 2017 in C.S.No.775 of 2017 dated 09.10.2017. For Applicants : Mr.B.Kumar, Senior Counsel for Mr.S.Ramachandran in A.Nos.8280 of 2017 and 7224 of 2018 Mr.S.Balachandran in O.A.Nos.992 and 993 of 2017 For Respondents : Mr.S.Balachandran in A.Nos.8280 of 2017 and 7224 of 2018 Mr.B.Kumar, Senior Counsel for Mr.S.Ramachandran O.A.Nos.992 and 993 of 2017 - - - - - COMMON ORDER
This common order will govern the aforesaid four interlocutory applications.
2 O.A.Nos.992 and 993 of 2017 are interlocutory applications taken out by plaintiffs in the main suit in which common interim orders were granted on 09.10.2017 and the same are operating. A.Nos.8280 of 2017 and 7224 of 2018 have been taken out for vacating the aforesaid common interim orders dated 09.10.2017. In other words, there are two injunction applications and two vacate injunction applications constituting these four interlocutory applications which shall stand disposed of by this common order. For the sake of brevity, O.A.Nos.992 and 993 of 2017 shall hereinafter be collectively referred to as 'injunction applications' and A.Nos.8280 of 2017 and 7224 of 2018 shall hereinafter be collectively referred to as 'vacate injunction applications'.
3 There are two plaintiffs in the main suit. First plaintiff is a partnership firm and second plaintiff is a natural person who is a partner in first plaintiff partnership firm. There are three defendants in the main suit. First defendant is a partnership firm and second defendant is a natural person, who is a partner in the first defendant partnership firm. Third defendant has been described as 'M/s.Ravirams, A Proprietary Concern, Proprietor S.Ravichandran' in the short cause title, therefore for all practical purposes, third defendant is one S.Ravichandran carrying on business in the name and style 'Ravirams' as its sole proprietor. To be noted, as it is the stated position of defendants that S.Ravichandran is carrying on business in the name and style 'Ravirams' as its sole proprietor, 'Ravirams' being prefixed with 'M/s' is clearly incorrect as it is also the stated position of defendants that 'Ravirams' is not a compendious name.
4 Plaintiffs 1 and 2 are applicants 1 and 2 respectively in injunction applications. They are also respondents 1 and 2 in the two vacate injunction applications. Defendants 1 to 3 in the main suit are respondents 1 to 3 respectively in the two injunction applications. They are applicants 1 to 3 in the two vacate injunction applications.
5 Parties in this common order are referred to by their respective ranks in the main suit for the sake of convenience and clarity.
6 Plaintiffs have filed the main suit with prayers for injunctive reliefs regarding infringement of trade marks, infringement of copyright, passing off and use of deceptively similar trade dress. There are other usual prayers for surrender of offending materials, accounts, damages, costs and a residuary omnibus limb. In other words, there are 9 limbs of prayers in the main suit which have been set out as sub paragraphs (a) to (i) of prayer paragraph of the plaint. To be noted, the prayer paragraph is an unnumbered paragraph and in terms of sequence, it is immediately after valuation paragraph in the plaint which is paragraph No.32.
7 As mentioned supra, first plaintiff is partnership firm and second plaintiff is a natural person who is said to be a partner in the first plaintiff firm.
8 In unfurls from the plaint averments that plaintiffs coined the word 'RAMRAJ' in 1983 by combining the first part of second plaintiff's father's name 'Ramasamy' and second part of second plaintiff's name. This according to plaintiffs has become their house mark. It further unfurls from the plaint averments that second plaintiff along with other members of his family formed several partnership firms and first plaintiff is one such partnership firm which was entrusted with the work of starting exclusive showrooms for marketing plaintiffs' products. It has also been averred in the plaint that second plaintiff and some other partnership firms have manufacturing units, they produce several products and these products are distributed / consigned to various retailers and wholesalers. Interestingly, such retailers and wholesalers include first plaintiff partnership firm and first defendant partnership firm. However, with regard to first defendant partnership firm, it has been averred that they were such retailers till recently. To be noted, this plaint was presented on 04.10.2017 and therefore, it is to be inferred that first defendant was a retailer and wholesaler for plaintiffs and plaintiff's products till some point of time preceding October, 2017.
9 It is plaintiffs' claim that they are pioneers in India in respect of manufacture and sale of Dhotis, Shirts, Vests, Briefs, gents and ladies inner wear and all kinds of ready-made materials and textile piece goods for several decades. Plaintiffs have several trade mark registrations and copyright registrations. Alleging that plaintiffs trade mark registrations and copyright registrations are being infringed by defendants besides objectionable passing off action and unauthorised use of trade dress by defendants, the instant suit has been filed.
10 The central theme of these interlocutory applications are 10 trade mark registrations, 3 copyright registrations and a trade dress pertaining to these 10 trade mark registrations and 3 copyright registrations.
11 Details of 10 trade mark registrations are as follows :
Sl.No. Trade Mark No. Class Mark 1 1802195 35 2 3100973 24 3 3100974 25 4 2187593 35 5 2463610 35 6 1802194 25 7 1802196 24 8 1082121 25 9 1082120 24 10 931254 24 12 Details of 3 copyright registrations are as follows :
Sl.No. Copy Right Registration No. Category Work 1 A-75792/2006 Artistic 2 A-75793/2006 Artistic 3 A-89729/2011 Artistic 13 Trade dress of plaintiffs using the aforesaid trade mark and copyright registrations, as depicted by plaintiffs in the plaint is as follows:
14 The aforesaid 10 trade mark registrations and 3 copyright registrations together with the aforesaid trade dress of plaintiffs shall hereinafter collectively be referred to as 'suit IPR' for the sake of convenience and clarity.
15 The Trade dress of defendants which according to plaintiffs is violation / infringement / passing off qua suit IPR, as depicted in the plaint, is as follows :
16 To be noted, aforesaid 10 trade mark registrations are in 3 classes, i.e., Classes 24, 25 and 35 under the relevant schedule under the Trade Marks Act, 1999. I deem it appropriate to extract and reproduce the enumeration of goods as contained in the trade mark registration certificates produced by the plaintiffs. They are as follows :
Sl.No. Trade Mark No. Class Goods and Description 1 1802195 35 Marketing and Retailing of all kinds of textile piece goods, Hosieries, Readymade Garments and clothing accessories.2
3100973 24 Textiles and Textile goods, not included in other classes, Bed covers, Table covers, Fabrics for textile use, Cotton Fabrics, Woolen fabric, Knitted fabric, Linen cloth, Linings (Textile), Textile material, Silk (cloth), Handkerchiefs of textile, Towels of textile, Elastic woven material, Traced cloth for Embroidery, Quilts, Table Napkins of textile, Upholstery fabrics.3
3100974 25 Clothing, Footwear, Headgear, Dhoti (Mens wear), Shirts, Tee-shirts, Pants, Trousers, Dresses, Ready-made clothing, Saris, Sarongs, Lungi, Pyjamas, Skirts, Hosiery, Underclothing, Underpants, Underwear, Vests, Brassieres, Petticoats, Suits, Sweaters, Jackets, Overcoats, Knitwear, Neckties, Belts, Caps, Gloves, Scarfs, Shawls and Socks.4
2187593 35 Retail and wholesale services connected with the sale of all types of textiles and textile piece good including lungies, bed sheets, bed spreads, pillow covers, curtain cloth, towels, casement, dhothies, handkerchiefs, sarees, blouse materials, chudhithar materials, fabric cloth, suitings, shirtings, interlinings, hosieries, readymade garments and other types of clothing and clothing accessories, belts, ties, footwear, leather items, fashion jewellery and cosmetics.5
2463610 35 Wholesale, retail and marketing services connected with the sale of textiles and textile piece goods, hosieries, readymade garments, clothing and clothing accessories.6
1802194 25 Hosieries including vests, briefs, trunks, panties, chemise, bras and petticoats, all types of readymade garments including T-Shirts, shorts, pants, all kinds of kids wear, nighties and night pants.7
1802196 24 All types of textile piece goods including lungies, takkars, bed sheets, bed spreads, pillow covers, curtain cloth, bleached mull, bleached poplin, bleached long cloth, towels, casement, dhothies, handkerchiefs, sarees, blouse materials, chudhithar materials, bleached and dyed fabric cloth, suitings, shirtings and woven interlinings.8
1082121 25 All kinds of hosiery goods and readymade garments.9
1082120 24 All kinds of textiles piece goods.10
931254 24 Textile piece goods including suitings, shirtings, sarees and dress materials.
17 It is seen from the aforesaid enumeration that the goods and descriptions do not fit into the aforesaid classes in its entirety. In other words, if each of the goods contained in a class is construed to be a pigeon hole, all the goods in the aforesaid enumeration do not fit into the pigeon holes neat, straight and clean. This takes us to Section 7 of 'The Trade Marks Act, 1999' ('TM Act' for brevity) and Rule 20 of 'The Trade Marks Rules, 2017' ('TM Rules' for brevity). These two provisions read as follows :
Section 7 of TM Act :
7.Classification of goods and services.--(1)The Registrar shall classify goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks.
(2)Any question arising as to the class within which any goods or services falls shall be determined by the Registrar whose decision shall be final. Rule 20 of TM Rules :
20.Classification of goods and service.--(1)Classification of goods and service for the purpose of registration of Trade Mark, the goods and services shall be classified as per current edition of the International Classification of goods and services (NICE classification) published by the World Intellectual Property Organization (WIPO).
(2)The Registrar shall publish a class wise and an alphabetical index of such goods and services, including goods and services of Indian origin. 18 Though Section 7 says that Registrar shall classify the goods 'as far as may be', in accordance with the International classification of goods and services, a reading of sub-section (1) of Section 7 in its entirety makes it clear that it has to be 'in accordance with the International classification of goods and services'. A further perusal of Rule 20 of TM Rules in juxtaposition with the aforesaid Section 7 of TM Act reveals that if Registrar wants to classify goods and services 'as far as may be', he has to publish a class wise alphabetical index of such goods and services including goods and services of Indian origin and such list / classification has to be 'in accordance with the NICE classification published by World Intellectual Property Organization (WIPO)'.
19 As I have noticed the enumeration of goods and descriptions in the 10 trade mark certificates, I have deemed it appropriate to refer to the aforesaid provisions regarding classification of goods and services and the power of the Trade Mark Registrar. However, owing to the trajectory of these interlocutory applications in this matter, it is made clear that I leave open this question for deliberation, debate, discussion and a decision in a matter where the trajectory of the litigation is different. In other words, the enumeration of goods and descriptions as in the 10 trade mark certificates being reproduced supra shall not be construed as a conclusive authority for the principle that trade mark Registry / Registrar under the TM Act has powers to issue trade mark registration certificates with such classification and description of goods and services.
20 All the three copyright registrations are 'artistic work'.
21 Before we proceed to advert to the core issue, it may be necessary to set out some details about defendants as can be culled out from the pleadings and as can be gathered from the submissions made before this Commercial Division.
22 As mentioned supra, first defendant is a partnership firm. One Srinivasan is said to be the Founder of first defendant firm. It is also averred that Srinivasan has two sons and their names are Ravichandran (second defendant) and Ramanathan and it is on this basis that the name ARRS Silks was coined. They are in the business for more than 50 years. It is also the categoric submission of defendants that first defendant partnership firm has only three showrooms in Namakkal, Salem and Hosur. It is also the further case of defendants that all three show rooms are multi brand outlets where they sell several textile and clothing products. Plaintiffs' products are one amongst several multi brand products which are being sold by first defendant firm is defendants' say. As already mentioned supra, second defendant is a partner in the first defendant firm. S.Ravichandran is trading in the name of Ravirams as sole proprietor and that explains the third defendant's presence in the suit.
23 It is not in dispute that defendants were one of the largest dealers of plaintiffs and plaintiffs' products for a very long time. Prior to filing of this suit, defendants started using a trade dress and a label mark respectively which are as follows :
24 Complaining that the use of the aforesaid mark and trade dress is violation / infringement of suit IPR as also passing off qua suit IPR, plaintiffs on 28.9.2015 filed a suit in C.S.No.831 of 2015. In this suit, interim orders were granted on 08.10.2015 and the same was continued / extended until further orders on 18.01.2016. Defendants discontinued use of the aforesaid mark and trade dress owing to which the suit came to be disposed of vide judgment and decree dated 22.02.2018 wherein prayers regarding injunctive reliefs were decreed and prayers regarding other reliefs, i.e., reliefs pertaining to damages, costs, delivery of offending materials were given up. It is the case of the plaintiffs that even while the earlier suit was pending, defendants started using the aforesaid offending trade dress and therefore, the instant suit came to be presented on 04.10.2017.
25 Let me now proceed to set out the rival submissions.
26 The submissions of plaintiffs and defendants have already been broadly set out. However, for the purpose of clarity and analysis, I am of the view that the same has to be recorded in a nutshell as crisp and cryptic points.
27 In this view of the matter, submissions of plaintiffs can be summarised into crisp and cryptic points as follows :
(a)Plaintiffs are prior users qua suit IPR. To be noted, though plaint averments say the term 'RAMRAJ' was coined in 1983, plaintiffs claim user which is prior in point of time on the ground that they bought it from a third party;
(b)Depiction of alleged offending mark, i.e., trade dress of defendants in the instant suit is dishonest as the same was done while injunction in C.S.No.831 of 2015 (hereinafter referred to as 'senior suit' for brevity) was operating;
(c)Similarity between suit IPR and alleged offending trade dress are so close that confusion is inevitable;
(d)Defendants applied for registration of mark 'RAVIRAMS' (label mark) vide application dated 21.11.2015 while the senior suit was pending and interim order therein was operating.
28 Submissions of defendants in a nutshell are as follows :
(a)Depiction of alleged offending mark, i.e., trade dress is not dishonest as it has been coined by combining two parts of the names of two partners in the first defendant firm (also sons of the Founder Srinivasan), namely Ravichandran and Ramanathan;
(b)To be noted, Ravichandran and Ramanathan are blood brothers. The mark 'RAVIRAMS' is combination of the first parts of the names of two brothers;
(c)Defendants are having multi brand showrooms only and they have three showrooms in all, i.e., in Namakkal, Salem and Hosur. They have been in textile and clothes industry trade for over half century and therefore, the allegation of dishonesty in depiction and passing off are unfounded;
(d)Plaintiffs have filed the instant suit in this court only with the intention of harassing the defendants. In other words, plaintiffs have filed this suit by abusing Section 134 of Trade Marks Act, 1999 ('TM Act' for brevity). Admittedly, when defendants are neither carrying on the business nor residing within the territorial jurisdiction of this court and admittedly when the position is same with regard to second plaintiff also, territorial jurisdiction has been created by giving the showroom address of first plaintiff and by abusing section 134 of TM Act. This according to defendants is clearly contrary to Sanjay Dalia principle laid down by Hon'ble Supreme Court. (To be noted, Sanjay Dalia principle is a reference to (2015) 10 SCC 161 [Indian Performing Rights Society Ltd. v. Sanjay Dalia].
(e)Most importantly, defendants have filed an affidavit dated 30.01.2018 in the course of the hearing of the instant injunction and vacate injunction applications stating that they will change the offending trade dress. The changed trade dress are three in number and the same are as follows :
(I) (II) (III)
(f)The aforesaid change was made without prejudice to the rights and contentions of defendants in the main suit and it is the fervent plea of defendants that aforesaid can operate as an interim arrangement pending adjudication of other issues in the main suit. It is also the say of defendants that the aforesaid changed trade dress are those about which plaintiffs cannot have any complaint qua suit IPR.
29 In support of their aforesaid contentions, Mr.S.Balachandran, learned counsel for plaintiffs referred to several case laws. However, in the light of the nature of the order I propose to pass and in the light of the changed trade dress of defendants, it would suffice if there is summation of judgments referred to by plaintiffs. To be noted, this summation of judgments referred to by plaintiffs is for the limited purpose of capturing as comprehensively as possible, the nature and trajectory of the hearing before me in these injunction and vacate injunction applications.
30 Plaintiffs referred to Gillette Company LLC Vs. Tigaksha Metallics Private Ltd. reported in 2018 SCC OnLine Del 9749 rendered by a learned Single Judge of Delhi High Court for the principle that change in technology has impacted the perception of IPR infringement by Court.
31 Banyan Tree Holding (P) Limited Vs. A.Murali Krishna Reddy and another reported in 2010 (42) PTC 361 (Del) was referred to to say that even the presence of interactive website will create cause of action.
32 Laxmikant V. Patel Vs. Chetanbhai Shah and another reported in (2002) 3 SCC 65 was referred to for the principle that poaching customers is also one of the determinants in cases of this nature. S.V.S. Oil Mills Vs. S.V.N. Agro-refineries & Anr reported in (2004) 29 PTC 548, R.Gopalakrishnan Vs. M/s.Venkateshwara Camphor Works reported in 2000 (IV) CTC 222, Dr.Reddy's Laboratories Ltd. Vs. Reddy Pharmaceuticals Limited reported in 2004 (76) DRJ 616, Midas Hygiene Industries (P) Ltd. Vs. Sudhir Bhatia reported in (2004) 3 SCC 90, Satyam Infoway Ltd. Vs. Siffynet Solutions (P) Ltd. reported in (2004) 6 SCC 145 were all referred to drive home various parameters and determinants regarding grant of interim orders.
33 A judgment of Circuit Court of Appeals, Sixth Circuit in Broderick & Bascom Rope Co. Vs. Manoff case [No.5197 dated June 12, 1930] was referred to. This American judgment was referred to with regard to safe distance rule. Another American judgment of Court of Appeals, First Circuit in Boston Athletic Association Vs. Sullivan case [No.88-1352 dated January 27, 1989] was referred to, to say that a person copying a copyright would always make some minor changes and therefore, those minor dissimilarities will not sway the court from granting an interim order.
34 Another American judgment in Godillot Vs. American Grocery Co. case being a judgment made by a Circuit Court in New Jersey [71 F. 873, dated January 25, 1896] was referred to, to say that monograms with similarity being offered for sale in same counters is likely to cause confusion.
35 One more American judgment made by District Court of Appeal, Third District, California being MacSweeney Enterprises, Inc Vs. Joseph P.Tarantino [Civ.10919, dated July 2, 1965] case was referred to. Principle in this case is, even when adoption was made owing to some surname or personal name, the mark attains exclusivity when it attains secondary meaning.
36 An English judgment being Seixo Vs. Provezende case was pressed into service to say that one man cannot offer his goods for sale representing them to be manufactured by a rival trader and it is one of essential principles for grant of interim orders in cases of this nature.
37 I now turn to the judgments / case laws pressed into service by the defendants.
38 On the side of defendants, Precious Jewels and another Vs. Varun Gems reported in (2015) 1 SCC 160 was referred to, to bolster their submission pitched on Section 35 of TM Act. This was pressed into service to drive home the principle that Section 35 of TM Act permits any one to do his business in his own name in a bona fide manner.
39 S.Syed Mohideen Vs. P.Sulochana Bai reported in (2016) 2 SCC 683 was pressed into service for the principle that when two persons are registered owners of trade marks, there cannot be exclusive right to use of such trade mark against each other.
40 P.Chenchu Ramiah Vs. A.M.Noohu Nachia and another reported in 1999-1-L.W. 37 was pressed into service to say that reasons have to be given when an ex parte interim order is granted. It was pointed out that the interim order dated 09.10.2017 which is sought to be vacated in the instant case does not give any reasons.
41 Lastly, New Look Textiles Vs. K.N.Nagarajan reported in CDJ 2010 MHC 7803 (second plaintiff was a party to the same) was pressed into service to say that when mark is changed and when defendant start using changed or modified mark, there shall be no infringement if the changed mark passes the test in this regard.
42 Besides this, Indian Performing Rights Society Limited Vs. Sanjay Dalia and another reported in (2015) 10 SCC 161 was pressed into service to say that Section 134 of TM Act cannot be used to file a suit in a place where defendants have no presence, particularly when it is done with the intention of only causing inconvenience to defendants and harassing defendants.
43 In the light of the stand taken by defendants that they have changed the trade dress, after giving my careful consideration and after making close scrutiny of factual matrix as well as rival submissions, I find myself left with the view that it may be necessary to examine if the changed trade dress of defendants can serve as an interim arrangement to balance the rights and equities of parties, if the suit is expedited and disposed of very quickly by taking advantage of swift and strict time lines that have now been provided for in 'The Commercial Courts Act, 2015' ('said Act' for brevity). To be noted, as alluded to and mentioned supra, pleadings in the main suit are already complete. Therefore, the main suit is so positioned that it can straight away launch into trial which in turn can be concluded in quick time.
44 It has been alluded to supra by me that rival submissions or in other words, the core issue that fell for consideration in the main suit is one of the determinants which has made me think in terms of examining an interim arrangement and expediting the main suit simultaneously. An over view of rival submissions will reveal that the core issues are territorial jurisdiction or whether this Court has territorial jurisdiction, bona fide or dishonesty in adoption of alleged offending mark by defendants and legal rights of defendants in the light of the plea predicated on Section 35 of TM Act. To be noted, these three do not constitute an exhaustive list of core issues that fall for consideration in the main suit, but are certainly most important amongst list of core issues that fall for consideration in the main suit.
45 A perusal of the rival submissions that have been set out supra, pleadings pertaining to the same, documents that may have to be pressed into service to test the same and depositions that may be necessary in aid of testing these issues are such that these three core issues can be decided only in trial. These issues in my considered opinion cannot be decided on affidavits and counter affidavits much less in these interlocutory applications which are pertaining to injunction applications and vacate injunction applications. For an illustration, the question as to whether adoption of alleged offending mark by defendants is bona fide or dishonest will also turn heavily on Section 35 plea. For section 35 plea, while names are not in dispute, the question as to whether they were actually coined by taking two halves of names of two siblings or whether it was only an excuse after adopting the mark with an intention of riding on reputation of plaintiffs can be established only in trial. To be noted, even prior user plea of plaintiffs will have to be examined in trial. The reason is, plaintiffs, as alluded to supra have pleaded that they conceived and coined the mark in 1983, but are claiming user from earlier point of time on the basis of a buyout. Countering this, defendants are saying that they are more than half century old. They have multi brand outlets and they have only three showrooms, all of which go by the name ARRS Silks. In other words, it is the specific plea of defendants that any customer entering any one of the three show rooms of defendants would enter only with an intention of buying products from ARRS Silks and therefore, the question of deception, dishonest or resultant deception does not arise. As a retaliatory argument to this, it was submitted by plaintiffs that a very manner in which plaintiffs' products were stacked inside the first defendant's shop would reveal that an unsuspecting customer after entering the show room, though he enters ARRS Silks is likely to get deceived. This takes us to the question as to whether this would qualify as poaching of customers. For that matter, even an isolated incident in this regard in favour of one party or the other which alone can be projected at best in the hearing of interlocutory applications cannot be the basis for decisions in this regard as I am reminded of the English adage 'One Swallow does not make a summer'. Therefore, as a summation, it can be said that this Commercial Division has no hesitation or doubt in its mind that the core issues that emerge from the rival contentions have to necessarily be decided in the main suit based on deposition and documents that are marked and proved in a manner known to law. In other words, oral evidence and documents proved in a manner known to law are imperative to answer these issues clinchingly.
46 In the aforesaid backdrop, I now embark upon the exercise of comparing the changed trade dress which has been placed before me by defendants as part of sworn affidavit dated 30.01.2018. To be noted, the deponent of the sworn affidavit is the second defendant (S.Ravichandran) and he has signed the affidavit both in his capacity as partner of first defendant firm as well as the sole proprietor carrying on business in the name and style RAVIRAM'S. Therefore, this sworn affidavit dated 30.01.2018 has been sworn to by all three defendants. The changed trade dress, i.e., cartons are three in number and they have been scanned and reproduced in colour supra and they have been assigned numbers I, II and III. To be noted, while ignoring III owing to green colour, I am only considering I and II.
47 I now embark upon the further exercise of carefully comparing the trade dress of plaintiffs qua suit IPR and I and II cartons of defendants supra.
48 It is necessary to set out the methodology that has been adopted by me for making this comparison. In other words, it is necessary for me to set out not only the mode / method of comparison, but also the test that has been applied to arrive at conclusions made from such comparison.
49 The mode/ method of comparison and litmus test applied to arrive at a conclusion from such comparison can be formulated as follows :
'I saw the trade dress of plaintiffs qua suit IPR. Took it away from the sweep of my eyes. A little later, I saw trade dresses I and II of defendants. While so seeing trade dresses I and II of defendants, I put my head / mind in a particular mode by putting my feet in a different set of foot wear. All that I meant was, while looking at trade dresses I and II of defendants, I stepped into the shoes of a man of average intelligence with ordinary prudence and imperfect recollection. After stepping into the shoes of a man of average intelligence, ordinary prudence and imperfect recollection, I asked myself a question as to whether I would be lulled into the belief that what I am seeking now (trade dresses I and II of defendants) are what I had seen earlier (trade dress of plaintiffs qua suit IPR as scanned and reproduced supra). I found that the question I addressed myself to is no conundrum. I realised that the question is simple and straight, capable of a straightforward answer. I also realised that the straightforward answer can also be monosyllabic. That means, the answer needs no qualification and admits of no exception. The answer is not only in the negative, but it is also emphatic. The answer is 'NO'. In other words, I am convinced that a man of average intelligence with ordinary prudence and imperfect recollection while seeing the trade dresses I and II of defendants is certainly not likely to be lulled into belief that he is seeing the trade dress of plaintiffs qua suit IPR, particularly when he enters a multi brand showroom.
50 Though obvious, it is made clear that this is a prima facie view which I have taken for the purpose of deciding these interlocutory applications and for the purpose of deciding whether an interim arrangement which will balance the rights and equities of parties pending disposal of main suit is possible. In other words, even this conclusion being prima facie is subject to what unfolds and unfurls in the trial.
51 To be noted, in making the aforesaid comparison and adopting the aforesaid methodology / mode for comparing as well as the principle applied for arriving at the conclusion therefrom has been done by me by drawing inspiration from the path breaking judgment of Hon'ble Supreme Court in the celebrated Parle judgment, being Parle Products (P) Ltd. v. J.P. and Co., reported in (1972) 1 SCC 618. Relevant paragraph is paragraph 9 and the same reads as follows :
9. It is, therefore, clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. In this case we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can essily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word Gluco Biscuits in one and Glucose Biscuits on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiffs' goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Homes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs' which was registered. We do not think it necessary to refer to the decisions referred to at the bar as in our view each case will have to be judged on its own features and it would be of no use to note on how many points there was similarity and in how many others there was absence of it. 52 Further to be noted, the aforesaid Parle judgment was quoted with approval by Hon'ble Supreme Court as late as in 2000 in Cadbury's judgment being S.M. Dyechem Ltd. v. Cadbury (India) Ltd., reported in (2000) 5 SCC 573. Relevant portion in Cadbury's judgment is contained in paragraph 33 of Cadbury's judgment and the most relevant of paragraph 33 reads as follows :
'33.This Court has laid down in Corn Products Refining Co. v. Shangrila Food Products Ltd. [AIR 1960 SC 142] which was a case of infringement, that it would be for the court to decide whether the marks were similar. It was observed that in deciding a question of similarity between two marks, the marks have to be considered as a whole. (emphasis supplied) Again in K.R. Chinna Krishna Chettiarv. Sri Ambal and Co. [(1969) 2 SCC 131 : AIR 1970 SC 146] where the question of similarity arose at the stage of opposition to the appellant's mark by the respondents (who had a registered trademark), it was observed that: (SCC p. 134, paras 6 & 7) It is for the court to decide the question on a comparison of the competing marks as a whole.
*** The resemblance between the two marks must be considered with reference to the ear as well as the eye. (emphasis supplied) In Roche and Co. v. Geoffrey Manner and Co. [(1969) 2 SCC 716 : AIR 1970 SC 2062] the question of deceptive similarity was raised by the appellant (a registered trademark-holder) for removal of the respondent's trademark, in rectification proceedings. (The decision is relevant in an infringement action except that the burden of proof in an infringement action is on the plaintiff while in an application for rectification it is on the applicant.) It was again observed in the above case that: (SCC p. 720, para 7) It is necessary to apply both the visual and phonetic tests. It is also important that the marks must be compared as wholes. The true test is whether the totality of the proposed trademark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trademark. (emphasis supplied) In yet another case of an infringement action, Parle Products (P) Ltd. v. J.P. and Co.[(1972) 1 SCC 618 : AIR 1972 SC 1359] the question was in relation to a wrapper with the words Gluco Biscuits and the particular colour scheme, the general get-up used for sale of Parle's Gluco Biscuits so printed on the wrapper. There was a farmyard with a girl in the centre carrying a pail of water and cows and hens around her in the background of a farmhouse. The defendant was selling biscuits with the name Glucose Biscuits. The wrapper contained a picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle and a bundle of food, with cows and hens around, in the background of a building. This Court held, on those facts, that in an infringement action, it was sufficient if there was overall similarity as would mislead a person usually dealing with one to accept the other if offered to him. Here the packets were of the same size and the colour scheme and design were having close resemblance. The marks should not be kept side by side and compared. The essential features of both marking were a girl with one arm raised and carrying something in the other while the cows or hens were near her, in the background of a house. .....' 53 Defendants' back to back capital 'R' in the changed trade dresses I and II are as follows :
54 The logo of plaintiffs' is as follows :
55 I took into account the submission of the plaintiffs that the two 'R's placed back to back with a crown atop is objectionable in proposed trade dresses I and II of defendants. From the trade mark registrations of plaintiffs and from the trade dress of plaintiffs placed before me, I find that a logo forms part of the same and I am unable to convince myself that the back to back capital 'R's with a crown can cause any confusion / deception qua the logo therein when above mentioned litmus test is applied. Section 35 of TM Act plea of defendants also should be borne in mind in this regard.
56 To be noted, Mr.B.Kumar, learned Senior Counsel on behalf of defendants pointed out that the interim order dated 09.10.2017 is an ex parte interim order and it does not give reasons. Learned Senior Counsel took me through the interim order and the same reads as follows :
Notice returnable by 6.11.2017.
Private Notice permitted.
There shall be an order of ad-interim injunction till then.
List on 6.11.2017. 57 To be noted, the first of the two vacate interim injunctions, i.e., A.No.8280 of 2017 was filed on 12.12.2017 in this Commercial Division after the notification of the Commercial Division and after transfer of the main suit to this Commercial Division under Section 15 of said Act. Referring to the interim order granted by the regular court prior to constitution of Commercial Division, Mr.B.Kumar, learned Senior Counsel specifically submitted that while granting an injunction before giving notice to the opposite party, the Court can do so only if the Court is of the opinion that the object of grant of injunction would be defeated by delay and such opinion of the Court should be recorded. Learned Senior Counsel has made a reference to the proviso to Rule 3 of Order XXXIX of 'The Code of Civil Procedure, 1908' ('CPC' for brevity). Basing his submissions on this principle, learned Senior Counsel submitted that he is entitled to have the interim order vacated on this ground also. However, defendants have chosen to file vacate injunction applications invoking Rule 4 of Order XXXIX CPC.
58 Mr.B.Kumar, learned Senior counsel, placing reliance on P.Chenchu Ramiah case reported in 1999-1-L.W. 37 (alluded to supra), submitted that proviso to Rule 3 of Order XXXIX CPC has not been followed. I also noticed that, this principle regarding proviso to Rule 3 of Order XXXIX CPC has been held to be non negotiable by Hon'ble Supreme Court in Shiv Kumar Chadha Vs. Municipal Corporation of Delhi and others reported in (1993) 3 SCC 161. Relevant portion is contained in paragraph 33 of Shiv Kumar Chadha case and the same reads as follows :
33.....Apart from that now in view of the proviso to Rule 3 aforesaid, there is no scope for any argument. When the statute itself requires reasons to be recorded, the court cannot ignore that requirement by saying that if reasons are recorded, it may amount to expressing an opinion in favour of the plaintiff before hearing the defendant. 59 To be noted, in Chenchu Ramiah case, a learned Single Judge of this Court has followed Shiv Kumar Chadha case. Relevant portion is paragraph 35 of Chenchu Ramiah case and the same reads as follows :
35. The Honouable Supreme Court has repeatedly held how an interim order of injunction has to be passed. In (1993) 3 SCC 161 (Shivkumar Chand v. Municipal Corporation of Delhi and others), in paragraph 30 of the judgment, Their Lordships have held thus:
...Grant of injunction is within the discretion of the Court and such discretion is to be exercised in favour of the plaintiff only if it is proved to the satisfaction of the Court that unless the defendant is restrained by an order of injunction, an irreparable loss or damage will be caused to the plaintiff during the pendency of the suit. The purpose of temporary injunction is this, to maintain the status quo. The court grants such relief according to the legal principles--ex debito justitate. Before any such order is passed the Court must be satisfied that a strong prima facie case has been made out by the plaintiff including on the question of maintainability of the suit and the balance and convenience is in his favour and refusal of injunction would cause irreparable injury to him. In paragraph 34, it was held that the procedure contemplated under Rule 3 of Order 39, C.P.C. must be treated as mandatory. It was held thus:-
The imperative nature of the proviso has to be judged in the context of Rule 3 of Order 39 of the Code. Before the proviso aforesaid was introduced, Rule 3 said 'the court shall in all cases, except where it appears that the object of granting the injunction would be defeated by the delay, before granting an injunction, direct notice of the application for the same to be given to the opposite-party.' The proviso was introduced to provide a condition, where Court proposes to grant an injunction without giving notice of the application to the opposite-party, being of the opinion that the object of granting injunction itself shall be defeated by delay. The condition so introduced is that the Court, "shall record the reasons" why an ex parte order of injunction was being passed in the facts and circumstances of a particular case. In this background, the requirement for recording the reasons for grant of ex parte injunction, cannot be held to be a mere formality. This requirement is consistent with the principle, that a party to a suit, who is being restrained from exercising a right which such party claims to exercise either under a statute or under the common law, must be informed why instead of following the requirement of Rule 3, the procedure prescribed under the proviso has been followed. The party which invokes the jurisdiction of the Court for grant of an order of restraint against a party, without affording an opportunity to him of being heard, must satisfy the Court about the gravity of the situation and Court has to consider briefly these factors in the ex parte order. We are quite conscious of the fact that there are other statutes which contain similar provisions requiring the Court or the authority concerned to record reasons before exercising power vested in them. In respect of some of such provisions it has been held that they are required to be complied with but non compliance there with will not vitiate the order so passed. But same cannot be said in respect of the proviso to Rule 3 of Order 39. The Parliament has prescribed a particular procedure for passing of an order of injunction without notice to the other side, under exceptional circumstances. Such ex parte orders have reaching effect, as such a condition has been imposed that Court must record reasons before passing such order. If it is held that the compliance with the proviso aforesaid is optional and not obligatory, then the introduction of the proviso by the Parliament shall be a futile exercise and that part of Rule 3 will be a surplusage for all practical purposes. Proviso to Rule 4 of Order 39 of the Code, attracts the principle, that if a statute requires a thing to be done in a particular manner, it should be done in that manner or not all. This principle was approved and accepted in well-known cases of Taylor v. Taylor and Nazirahmed v. Emperor. This Court has also expressed the same view in respect of procedural requirement of the Bombay Tenancy and Agricultural Lands Act in the case of Ramchandrakeshav Adke v. Govind Joti Chavare.
As such whatever a Court considers it necessary in the facts and circumstances of a particular case to pass an order of injunction without notice to other side, it must record the reasons for doing so and should take into consideration, while passing an order of injunction, all relevant factors, including as to how the object of granting injunction itself shall be defeated if an ex parte order is not passed. .... (Emphasis supplied) To be noted, as reported in Law Weekly, Shiv Kumar Chadha case has been misspelt as Shivkumar Chand case.
60 Likewise, another learned Single Judge of this Court in K.Chandran Vs. Siriya Pushpam reported in (2009) 5 MLJ 383 has held that the Court is expected to cite reasons while ordering ex parte ad interim injunction and absence of reasons in that order would prove fatal to the very order itself. This is contained in paragraph 10 of K.Chandran case and the same reads as follows :
10.A bare perusal of the above would leave no doubt in the mind of the Court that while ordering ex-parte ad-interim injunction, the Court is expected to cite reasons. Absence of reasons being found cited in the order would prove fatal to the very order itself. 61 Both Chenchu Ramiah and K.Chandran cases were written by learned Single Judges of this Court in exercise of revisional jurisdiction of this Court qua subordinate courts. This is clearly permissible in the light of hierarchy of Courts that we are governed by. Likewise, in Shiv Kumar Chadha case, the Supreme Court was examining an order made by Delhi High Court which again is permissible in the light of hierarchy of Courts principle which we follow in our legal system.
62 In the instant case, the ex parte interim order has been granted by one learned Single Judge of this Court and learned counsel is now urging before another learned Single Judge that the order is liable to be vacated solely on the ground of non compliance with proviso to Rule 3 of Order XXXIX CPC. While the ex parte order of interim injunction granted by one learned Single Judge can be subsequently vacated by another learned Single Judge post contest or in other words, after hearing both sides on merits, in a vacate injunction petition (inter-alia in the light of second proviso to Rule 4 of Order XXXIX CPC), if the ground of non compliance with proviso to Rule 3 of Order XXXIX CPC is urged, whether the same will tantamount to sitting in appeal and examining the correctness of the ex parte interim order granted by another learned Single Judge resulting in breach of judicial discipline is the question that emanates from the submission of learned Senior Counsel. To put it in a nutshell, whether non compliance with proviso to Rule 3 of Order XXXIX CPC will be a ground available in a vacate injunction application or whether it will be available for a party against whom the interim order was operating only in the appellate forum or in a higher court is the neat question that emanates from the submission of learned Senior Counsel. It appears that answer to this question is not blessed with any direct and accurate authorities in this regard.
63 As I have analysed the rival submissions in great detail, it may not be necessary to delve and debate upon this argument in this case considering the peculiar facts of this case and the trajectory these interlocutory applications have now taken. However, I leave open the question as to whether a respondent will be entitled to get an ex parte interim injunction vacated solely on the ground that reasons have not been given / recorded for a debate and decision on the same in another matter where the trajectory is different. Therefore, I have decided these applications on hand without expressing any opinion on this aspect of the matter leaving this question open for debate, deliberation, discussion and a decision in a matter where the trajectory of the lis is different.
64 As alluded to supra, pleadings are complete. The time lines for expediting the main suit shall be as follows :
(a)Under the amended CPC as amended by said Act, procedural steps post completion of pleadings are inspection of documents under Rule 3 of Order XI of amended CPC followed by admission and denial under Rule 4 of Order XI of amended CPC. This exercise of inspection of documents followed by admission and denial under Rules 3 and 4 respectively of Order XI of amended CPC as amended by said Act shall be completed by both parties within six weeks from the date of pronouncement of this order in open Court.
(b)Immediately after the aforesaid six weeks, the suit shall be listed under the caption CASE MANAGEMENT HEARING ('CMH' for brevity) under Order XV-A of amended CPC as amended by said Act.
(c)In CMH, issues shall be framed, time lines shall be drawn up for deposition and the process of deposition, marking of exhibits shall be completed in six months, therefrom.
(d)Thereafter, written arguments under Order XVIII Rule 2 Sub Rules 3A to 3F shall be filed within a fortnight.
(e)Based on the written arguments, time lines shall be fixed for oral submissions and the same shall be completed within a fortnight therefrom.
In the aforesaid manner, the suit shall be expedited and completed within ten months from the date of pronouncement of this order in the open Court.
65 In the light of the narrative supra, the interim order granted on 09.10.2017 in O.A.Nos.992 and 993 of 2017 is modified by partly allowing the vacate injunction applications being A.Nos.8280 of 2017 and 7224 of 2018 by holding that defendants shall use the changed trade dresses, i.e., I and II scanned and reproduced supra. This interim arrangement shall be in force for 11 (Eleven) months from the date of this order being pronounced in open Court. There shall be no order as to costs in these applications leaving it open to be decided in the main suit.
66 If there is undue delay in the time lines drawn and set out supra, the party complaining of delay by other side can approach this Court for continuing / not continuing this order and or seeking any other suitable orders with regard to this interim arrangement. I part with this case, in the hope that this scenario does not arise in this case in the days to come.
67 Though obvious, for the purpose of abundant clarity, it is made clear that the observations made in this order are only for the limited purpose of disposal of these interim injunction applications and vacate injunction applications. In other words, the main suit shall be tried, heard and disposed of uninfluenced by and untrammelled by any observation that has been made in this order.
68 All four applications are disposed of on above terms.
69 Four other applications, being O.A.Nos.994 and 995 of 2017 for injunctive reliefs pertaining to infringement and passing off qua suit IPR and A.Nos.7502 and 7503 of 2017 under Order XXXIX Rule 2A CPC shall also be decided along with the main suit as the same will also require evidence to be let in.
11.10.2018 Speaking order Index : Yes vvk M.Sundar, J.
vvk order in O.A.Nos.992 and 993 of 2017 and A.Nos.8280 of 2017 and 7224 of 2018 in C.S.No.775 of 2017 11.10.2018