Madras High Court
Mr.A.D.Padmasingh Isaac vs / on 2 December, 2021
Author: N.Anand Venkatesh
Bench: N.Anand Venkatesh
C.S.(Comm.Div.) 125 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 02.12.2021
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit (Comm.Div.) No.125 of 2020
1. Mr.A.D.Padmasingh Isaac
Proprietor,
Aachi Spices and Foods,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai-600 040.
2. M/s. Aachi Masala Foods (P) Ltd.,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai-600 040
Represented by its Director
Mr.Ashwin Pandian
3. M/s.Heavenly Foods P Ltd.,
Plot No.1926, 34th Street,
I Block, Ishwarya Colony,
Anna Nagar West,
Chenni – 600 040
Represented by its Director,
Mrs.Shiny Ashwin .. Plaintiffs
/versus/
Chettinadu Aachi Samaiyl
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C/o.Tidel Park
No.4 Rajiv Gandhi Salai,
Taramani, Chennai 600 113
and Also at
No.29, 5th Street,
New Colony, Adambakkam,
Chennai 600 088
and also at
No.65, 5th street,
Balakrishnapuram,
Adambakkam,
Chennai 600 088 ..Defendant
Prayer: Civil Suit has been filed under Order IV, Rule 1 of the
Original Side Rules and Order VII, Rule 1 of the C.P.C. Read with
Sections 27(2), 29, 134 & 135 of the Trade Marks Act, 1999,
praying to pass a judgment and decree for:-
(a) granting a permanent injunction, restraining the
defendant, by itself, their servants, agents, distributors, or
anyone claiming through them from manufacturing, selling,
advertising and offering for sale using the name CHETTINADU
AACHI SAMAIYAL or any other similar trade mark name or similar
sounding expression in any media and use the same in name
board, invoices, letter heads and visiting cards or by using any
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C.S.(Comm.Div.) 125 of 2020
other trade mark/ name which is in any way visually or
deceptively or phonetically similar to the 1st plaintiffs trade
mark/name AACHI/AACHI CHETINAD RESTAURANT/AACHI
KITCHEN and use the same in pouches, packets or use the mark
in invoices, letters heads and visiting cards or part of their
restaurant name any other trade literature or menu card any
food preparation by using any other trade mark which is in any
way visually, or phonetically similar to the plaintiffs registered
Trade mark Nos.838786, 1116254, 1479159, 1715718 & 2965624 or
in any manner infringing the 1st plaintiffs registered trade marks
referred herein.
(b) granting a permanent injunction, restraining the
defendant, by itself, its agents or servants or anyone claiming
through or under him any business marketing, selling advertising
using in trade literature, menu cards, invoices, name boards,
website, Internet advertisements the mark/name CHETTINADU
AACHI SAMAIYAL in relation to the Restaurant or with respect to
or any other food preparation or on any other business the
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C.S.(Comm.Div.) 125 of 2020
impugned trademark / name which is any manner deceptively or
phonetically confusingly similar to the plaintiffs trade
mark/name AACHI/AACHI CHETTINAD RESTAURANT/ AACHI
KITCHEN or in any other manner pass off their hotel, business or
goods as and for that of the plaintiffs.
(c) directing the defendant to surrender to the plaintiffs all
the packing material, cartons, advertisement materials and
hoardings, letter-heads, visiting cards, office stationery and all
other materials containing/bearing the name CHETTINADU AACHI
SAMAIYAL or other identical trade mark used in the pouches and
packets bearing the work AACHI/AACHI HOTEL/AACHI CHETTINAD
RESTAURANT /AACHI KITCHEN.
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark
CHETTINADU AACHI SAMAIYAL on the service referred and
decree the suit for the profits found to have been made by the
defendant, after the defendant has rendered accounts.
(e) directing the defendant to pay to the plaintiffs the
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C.S.(Comm.Div.) 125 of 2020
costs to the suit, and
(f) pass such further or other order, as this Hon'ble Court
may deem fit and proper in the circumstances of the case and
thus render justice.
For Plaintiffs :Mr.Gladys Daniel
For Defendant :Set exparte
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JUDGMENT
The present suit has been filed seeking for the relief of permanent injunction, restraining the defendant, his servants or anyone claiming through the defendant from manufacturing, selling, offering and advertising for sale adopting the name CHETTINADU AACHI SAMAIYAL or any other trade mark name or any name with a similar sounding expression in any media or by using any other trade mark and/or name which are visually, phonetically or deceptively similar to the 1st plaintiff’s registered trade mark/name AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN/ and the 5/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 plaintiffs have also prayed for a direction to the defendant, to surrender all the materials including the advertising materials, pouches, packets and hoardings bearing the name CHETTINADU AACHI SAMAIYAL/ or any other word identical to the plaintiffs’ names AACHI’/ AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN. The plaintiffs have also sought for a direction to render the account of profits to the defendant.
2. The case of the plaintiffs is with respect to the infringement of their registered trade mark AACHI and AACHI CHETTINAD RESTAURANT. The trade mark AACHI was assigned in favor of the 1st plaintiff by one registered proprietary concern called the Aachi Masala Foods (P) on 30.03.2007. The plaintiffs state that, in the year 1999, the trade mark AACHI was first applied for and registered in the name of the 1st plaintiff trading as Naveen products. The plaintiffs also state that there are currently 178 registrations of the trade mark AACHI in various 6/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 words, labels and stylized marks and the 1st plaintiff also acquired international registration (WIPO) under the Madrid protocol for the trade mark AACHI word and device under classes 29, 30 and 43 in 107 and 117 designated countries respectively. It is claimed by the plaintiffs that the label marks as a whole have been in use since 1995 and that they have become widely famous among the trading community and the public. The plaintiffs further state that the 3rd plaintiff is the licensee of the 1st plaintiff to exploit the registered trademarks AACHI KITCHEN/ and AACHI CHETTINAD RESTAURANT and that the 1st plaintiff obtained the registration of the trade mark AACHI CHETTINAD RESTAURANT in respect of food preparations for human consumption such as coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes, flour, and preparations made from cereals, bread, biscuits, cakes, pastry, confectionery and ice. With respect to the mark AACHI KITCHEN, the plaintiffs state that the 1st plaintiff obtained the registration in respect of restaurants, providing of food and drink, temporary 7/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 accommodation, canteen, catering, self service restaurants, fast food restaurants and snack bars.The plaintiffs also state that they have now become one of the leading manufacturers of packaged masala products and that the mark AACHI has become synonymous with the goods produced by them and none else in the market.
3. The grievance of the plaintiffs is that in November 2019, they stumbled upon the defendant's hotel under the name CHETTINADU AACHI SAMAYAL/ . The plaintiffs state that they are perturbed by the defendant’s restaurant name which is a total copy of the plaintiffs’ registered trade mark. Plaintiff’s statethat the defendants are reaping benefits without sowing and they’re taking an undue advantage of the plaintiffs’ mark.Plaintiff’s also claim that thedefendant’s service is of inferior quality and substandard. The plaintiffs further claim that the defendant’s offending mark is visually and phonetically similar to the plaintiffs' trade mark and that the defendant’s mark is a conscious copy of the plaintiffs’ marks which is widely 8/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 famous, thereby leading to passing off of the defendant’s service as that of the plaintiffs.
4. The defendant choose not to enter appearance in this suit and defend their case and hence, was called and set exparte by this Court on 25.10.2021.
5. The only issue that arises for consideration in the present suit is whether the defendant, by using the mark CHETTINADU AACHI SAMAYAL/ has infringed the plaintiff’s trademarksAACHI / AACHI CHETTINAD RESTAURANT / AACHI KITCHEN/ and whether the same is phonetically and visually similar to the trade mark of the plaintiffs and as to whether the plaintiffs are entitled for the reliefs sought for in this suit.
6. The General Manager of the 2nd plaintiff company was examined-in-Chief as PW-1 on 26-11-2021 and exhibits P-1 to P-25 were marked.
7. Heard Mrs. Gladys Daniel, learned counsel for the 9/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 plaintiff and carefully perused the documents relied upon by the Plaintiff.
8. On carefully going through Exhibit P 16 (Legal use certificate of Trade mark No. 838786), it can be seen that the plaintiffs are the registered trade mark owner of the word mark AACHI. It can be seen that the word mark has a distinct identity and has been in usage since 1995. It can also be seen that the mark AACHI has become a well-known mark for masala and food products. On going though Exhibit P 17(Legal use certificate of Trade mark No. 1116254), it is evident that the 1st plaintiff is the owner of the trade mark AACHI CHETTINAD RESTAURANT and from Exhibits P 19 and P20((Legal use certificate of Trade mark Nos. 1715718 and 2965624 respectively)it is clear that the 1st plaintiff is the owner of the registered trade mark AACHI KITCHEN and the label. From perusing Exhibit P18 (Legal use certificate of Trade mark No. 1479159), it is evident that the 1st plaintiff has also obtained registration for the mark AACHI in 10/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 Tamil. A perusal of Exhibits P21, P22 and P23, reveal that the 3rd plaintiff is the licensee and has been using the trade mark AACHI KITCHEN since the year 2014. Further, the 1st plaintiff possessesinternational registration (WIPO) under the Madrid protocol for the trade mark AACHI word under classes 29, 30 and 43 in 107 countries and the same is clear from the document marked as Exhibit P15.
9. It is clear after going through the above-mentioned Exhibits that the defendant's hotel CHETTINADU AACHISAMAYAL is identical to the plaintiffs’ mark AACHI CHETTINAD RESTAURANT and indeed these two marks are visually and phonetically similar. The plaintiffs are prior users of the registered trademarksAACHI / AACHI CHETTINAD RESTAURANT / AACHI KITCHEN. Hence, the use of the hotel name CHETTINADU AACHI SAMAYAL by the defendant amounts to infringement and passing off.
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10. This Court in the case of ISSAC ISAAC Mathai vs.Sowkhya Way2health P. Ltd. reported in MANU/TN/2823/2013 held that adding of one or two words in a mark does not make any difference as far as phonetic similarity is concerned. The relevant paragraphs from the judgment is extracted below:
60. It may also be noticed here that act of the defendant/respondent is not bonafide, though they are claiming to use the trademark "SOUKYA WAY2HEALTH", but in all their letter heads and other documents displayed "SOWKHYA" prominently, whereas "WAY2HEALTH" is not that prominent. Besides, e-mail address is also deceptively similar to that of the plaintiffs/applicants, i.e., www.sowkhya.com.
61. It is well settled law that when there is 12/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 phonetic similarity between the two names, then adding of one or two words does not make it distinct from similarity. It can therefore, be safely said that the defendants/respondents have deliberately infringed the registered trademark of the plaintiffs/applicants.
11. Exhibit P25 contains the label of the defendant. A mere look at the trade mark ‘CHETTINADU AACHI SAMAYAL’/ that is used by the defendant shows that it is a conscious copy of the plaintiff’s registered trademark. This mark is phonetically and visually similar to the plaintiff’s trademarks ‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN' . The defendant has adopted this trademark only with a view to exploit the commercial goodwill achieved by the plaintiffs.
12. It must be borne in mind that the consumer who avails the services of these restaurants will be in the category of 13/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 a man of average intelligence and imperfect recollection. To such a man, there is absolutely no chance of drawing a distinction between the Plaintiff’s and the Defendant’s restaurant. This is not a case of deceptive similarity but one of exact reproduction of the Plaintiff’s registered trademark. The Defendants are deliberately using the trademark“CHETTINADU AACHI SAMAYAL’ to mislead the general public at largeand they are trying to cash in on the goodwill and reputation enjoyed by the Plaintiffs. A careful look at the impugned marks blatantly reveal that it is visually and phonetically identical to the Plaintiff’s registered trade mark. In view of the same, there is absolutely no doubt in the mind of this Court that the Plaintiffs are entitled to the reliefs sought for by them.
13. In the present case, both the parties are involved in the restaurant business. The defendant’s mark is phonetically and visually identical to the plaintiff’s trade mark and it is bound to cause confusion as both the services will be availed by the 14/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 same class of consumers. The above discussion leads to the conclusion that the mark “CHETTINADU AACHI SAMAYAL’/ used by the defendant has infringed the plaintiff’s trademarks ‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN/ . Accordingly, the plaintiff is entitled for the reliefs sought for in this suit. The issue is answered accordingly.
14. In fine, there shall be a decree for
(a) permanent injunction, restraining the defendant, by itself, their servants, agents, men, or anyone claiming through them ‘from manufacturing, marketing, distributing, offering and advertising for sale adopting the name CHETTINADU AACHI SAMAIYAL/ or any other trade mark name or any name with a similar sounding expression in any media or by using any other trade mark and/or name which are visually, phonetically or deceptively similar to the 1st plaintiff’s 15/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 registered trade mark/name AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN/ .
(b) There shall be a direction directing the defendant to surrender all the materials bearing the trade mark of the Plaintiff.
(c) There shall be a preliminary decree directing the defendant to render true and faithful accounts of the profits earned by them by using the offending trade mark ‘CHETTINADU AACHI SAMAYAL/ ”, from the date of filing of this suit up to the date of the judgement and decree passed in this suit.
15. The suit is decreed by imposing a cost of Rs.25,000/- payable by the defendant to the plaintiff.
02.12.2021 16/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 Index:Yes/No Internet : Yes/No rka List of Witness examined on the side of the Plaintiffs:-
PW1 examined in Chief on 26.11.2021. List of Witness examined on the side of the Defendant :-
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List of the Exhibits marked on the side of the Plaintiff:-
Sl. Particulars Remarks
Nos
.
1. Authorisation letter Photostat copy
2. Print out of the list of products Photostat copy
manufactured and marketed by
the plaintiffs bearing the
trademark AACHi
3. Certificate of incorporation of Aachi masala Foods P ltd dated 30.06.2006
4. Certificate of Commercial Tax Registration of Aachi Masala &Foods P Ltd dated 10.07.2006
5. Dissolution deed between Mrs.Rani Pandian and Mr.A.D.PAdmasingh Isaac dissolving the partnership firm, naveen products dated 17/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 Sl. Particulars Remarks Nos .
31.03.2007
6. Certificate of commercial tax registration and central sales tax of Aachi spices and Foods dated 28.12.2006 and 03.01.2007
7. Trade mark license user agreement between Mr.A.D.PAdmasingh Isaac trding as Aachi spices and foods and aachi masala Foods P ltd dated 01.04.2007
8. Memoramdum of Association of Aachi spices and Foods P ltd dated 06.03.2010
9. Certificate of Incorporation of Aachi spices and Foods P Ltd dated 17.03.2010
10. Trade Mark License user agreement between MR.A.D.Padmasingh Isaac and Aachi spices and Foods P Ltd dated 21.04.2010 11 Trade mark license user Agreement between Mr.A.D.Padmasingh Isaac and Aachi Masala Foods P ltd dated 21.04.2010
12. Print out of the Certificate of Incorporation of M/s.Heavenly 18/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 Sl. Particulars Remarks Nos .
Foods P ltd and Memorandum and articles of Association.
13. Certified copy of Plaintiffs Advertisement in RITZ Magazine
14. Registration certificates of the mark Aachi in various countries around the world.
15. Madrid Protocol Registration in Classes 29, 30, 43 with respet to the Trademark Aachi (word) designating 107 countries valid and subsisting as on date
16. Legal use certificate of Trade Mark No.838786 in Class 30, dated 29.01.1999
17. Legal use certificate of Trade mark No.1116254 in class 30, dated 03.07.2002
18. Legal use certificate of the Trade mark No.1479159 in class 30,dated 30.07.2008
19. Legal use certificate of the Trade Mark No.1715718 in class 43 dated 30.07.2008
20. Legal use certificate of the trade mark No.2965624 in Class 43 dated 18.05.2015.
21. Trade mark license under 19/21 https://www.mhc.tn.gov.in/judis C.S.(Comm.Div.) 125 of 2020 Sl. Particulars Remarks Nos .
Agreement between MR.A.D.PAdmasingh Isaac, Aachi Spices and Foods and Heavenly Foods p ltd dated 11.08.2014 P22 Aachi Kitchen's name board .
P23 Aachi Kitchen's menu card .
P24 Print out of the order passed by . Trademark Trial and Appellate board, United states patent and Trade mark office dated 13.09.2016 P25 Defendant's name board . Chettinadu Aachi samaiyal and Internet copy List of the Exhibits marked on the side of the Defendants:-
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