Bangalore District Court
M S Cothas Coffee Co vs Ms Cotha Associates on 1 October, 2024
KABC010027392021
Form No.9
(Civil) Title
Sheet for
Judgment in
Suits
R.P. 91 PRESENT:Sri. Chinnannavar Rajesh Sadashiv,
XVIII Additional City Civil Judge.
Dated this the 1st day of October, 2024
PLAINTIFF: M/S. Cothas Cofee Co.,
A registered partnership firm having
its Office at 609-560/1,
609-560/2 & 323 Part B,
Jigani, Bommasandra Link Road,
Jigani Industrial Area,
Anekal Taluk, Bengaluru-5622105
and represented herein by its Partner,
Mr.C.S.Nitin S/o Mr.C.K. Sreenathan,
Aged about 36 years.
[By Sri Thomas Vellapally, Advocate]
/v e r s u s/
DEFENDANTS: 1. M/s.Cotha Associates,
A parntership firm having its office
at B-16, Innova Agri Bio Park Ltd.,
KIADB Industrial Area, 3rd phase,
Malur-563 130,
and represented by its partner,
C.P.Chandan S/o Cothas K
Prakas, Aged about 41 years.
2. Mr.Cothas K Prakas-(Dead)
Partner, M/s.Cotha Associates
S/o Late Mr.C.KrishnaiahChetty
2 O.S.No.5165/2015
Resident of No.2(Old No.48),
ThambuChetty Road, Cox Town,
Bengaluru-560 005.
3. Mr.C.P.Chandan
Partner, M/s.Cotha Associates,
S/o Cothas K Prakas,
Aged about 41 years.
4. Mrs.Girija Chandan
W/o C.P.Chandan,
Aged about 44 years.
D3 and 4 are residing at
No.2 (old No.48),
ThambuChetty Road,
Cox Town, Bengaluru-560 005.
[D1, 3 & 4-Sri.V.K., Advocate]
[D2-Dead]
Date of institution of the : 15/06/2015
suit
Nature of the suit : For Perpetual Injunction (IPR)
Date of commencement of : 03/11/2017
recording of the evidence
Date on which the : 01/10/2024
Judgment was
pronounced.
: Year/s Month/s Day/s
Total duration
09 03 16
This suit is filed by the plaintiff for Perpetual
injunction restraining the defendants or anybody
claiming under them from infringing and passing off
of the plaintiff's registered trade mark 'COTHAS
COFEE' and 'COTHAS' by using the offending
3 O.S.No.5165/2015
trademark 'COTHA' with respect to coffee business in
any manner.
2. The case of the plaintiff in brief is as under:-
The plaintiff is the registered partnership firm
and it is represented by its partner
Sri.C.K.Sreenathan. The defendant No.2 and 3 are the
former partners of plaintiff's firm and they retired
from plaintiff's firm under retirement deed dated
23/12/2013 by receiving consideration amount of
Rs.11,74,25,000/- by defendant No.2 and
Rs.59,90,000/- by defendant No.3 and thereby they
relinquished all their right, title, interest and goodwill
over the plaintiff's firm and they agreed that in future
they will not run the coffee business by using the
word 'COTHAS COFEE'.
It is further case of the plaintiff that, by violating
the condition of the deed of retirement, defendants
No.2 and 3 have established the Partnership firm
M/s.Cotha Associates i.e.,defendant No.1 company
and they also applied for impugned trademark
'COTHA' on 02/07/2014 and it is opposed by the
plaintiff by filing objection. Defendants have tried to
4 O.S.No.5165/2015
use the identical word 'COTHA' in the coffee buseness
and coffee products. The plaintiff has adopted the
trademark 'COTHAS' by its ancestor
Sri.C.Krishnanah Chetty, who was the founder of the
plaintiff's business. The trademark of the plaintiff
'COTHAS COFFEE' has got very good reputation in
the lane of coffee business. The plaintiff has been
using the said trade mark since 1969 i.e., morethan
46 years.
It is further stated that plaintiff has also spent
huge amount towards advertisements and had
turnover of Rs.61.5 crores during 2014-15. It is
further stated that the plaintiff is entitle for protection
of their trade mark 'COTHAS' and 'COTHAS
COFFEE' and no other person can claim any right
over the said trade mark.
It is further case of the plaintiff that though
defendants No.2 and 3 have undertaken not to start
the Coffee business after their retirement by receiving
huge consideration amount but they started their
business by applying trademark 'COTHA', which is
phonetically, visually and deceptively similar to the
5 O.S.No.5165/2015
plaintiff's registered trademark and it would lead
confusion to the customers of the plaintiff.
It is further case of the plaintiff that defendants
No.2 and 3 after their retirement from the plaintiff's
firm have started the company by name 'Avighna
Coffee Company Private Limited' in the names of
their wives and said business is also business of
coffee and coffee products and they also applied for
trademark 'COTHA GIRI', which is deceptively similar
to the trademark of the plaintiff 'COTHAS' . The said
trademark was used by the defendants in order to
infringe the plaintiff's trademark. So, the plaintiff has
filed O.S.No.4047/2015 and obtained order of
temporary injunction. The defendants have tried to
use the trade mark 'COTHA' by removing the letter 'S'
from the plaintiff's trade mark 'COTHAS'. So, the
trademark used by the defendant is deceptively
similar to the plaintiff's trademark. The cause of
action arose to the plaintiff on 23/12/2013 when
defendants retired from the plaintiff's firm and also on
02/07/2014 when defendants have filed the
application before trademark authority seeking the
6 O.S.No.5165/2015
trademark 'COTHA'. So, it prayed to grant the decree
of permanent injunction restraining defendants or
anybody on their behalf from infringing and passing
off of the plaintiff's trade mark 'COTHAS' and
'COTHAS COFEE' by using offending trade mark
'COTHA' and sought the relief of permanent
injunction restraining the defendants No.2 and 3 from
carrying on any business, which is similar to the
plaintiff's business except manufacturing and sale of
roasted coffee seed/bean till 23/12/2016.
3. On issuance of suit summons, defendants
have appeared and filed written statement. In their
written statement, they have admitted that the
defendants No.2 and 3 were the partners of the
defendant No.1 and they retired from the plaintiff's firm
under retirement deed dated 23/12/2013. They have
also admitted that defendants No.2 and 3 started
defendant No.1 firm. But they denied that under
Retirement Deed, they have agreed not to use the
trademark 'COTHAS'.
They contended that the word 'COTHA' is the
family name and hence, as per section 35 of
7 O.S.No.5165/2015
trademark's Act, they can use the said name for their
business. When defendants No.2 and 3 were partners of
the plaintiff, they constituted the firm/Defendant No.1
and plaintiff was also aware about the said fact but
they have not raised any objections but now, filed this
suit to harass them. They have also contended that the
trademark used by them 'COTHA' is not phonetically
and visually similar to the plaintiff's trademark
'COTHAS'.
They contended that the mark used by them is
having distinct color scheme, layout with a distinct
design from the plaintiff's trademark. Hence, customers
of the plaintiff cannot be put into confusion with
respect to both trademarks. So, they prayed to dismiss
the suit with costs.
4. On the basis of above pleadings, my
predecessor in office has framed the following issues :
(1) Whether the plaintiff proves that it is
the registered owner of trademark
'COTHAS COFFEE' and 'COTHAS'?
(later Deleted)
(2) Whether plaintiff proves that the
defendants infringed and passing off
the plaintiff's well established
trademark 'COTHAS COFFEE' &
'COTHAS' by using offending trade
8 O.S.No.5165/2015
mark 'COTHA' which is deceptively
similar to that of plaintiff?
(3) Whether the plaintiff is entitled for the
decree of permanent injunction as
sought for?
(4) What order or decree?
ADDITIONAL ISSUES
(1) Whether the defendants prove that
'Cotha' is the family name of
defendants 2 and 3?
(2) Whether the defendants prove that
they are entitled to the protection of
Section 34 of the Trade Marks Act
1999?
5. In order to prove the case, the partner of the
plaintiff has got examined himself as PW.1 and got
marked Exs.P1 to 41 and they also got examined the
Chartered Accountant as PW.2. In order to rebut the
case of the plaintiff, the defendant No.2 has got
examined himself as DW-1 and got marked Ex.D.1 to
10.
6. I have heard both side and counsels for both
side have filed written synopsis as well as relied upon
the citations.
7. The counsel for the plaintiff has relied upon
the following citations:
(1) Halsbury(Trade Marks, 4th Edition, 1984,
Vol.48);
9 O.S.No.5165/2015
(2) MFA No.11075/2006(CPC) between
M/s.Adiga's Abhiruchi & Ors., Vs.
M/s.Adiga's Fast Food;
(3) MANU/TN/7805/2007 between Health and
Glow Retailing Pvt. Ltd., Vs. Dhiren Krishna
Paul & Ors.,;
(4) MANU/SC/3725/2006 between Ramdev
Food Products Pvt. Ltd., Vs. Arvindbhai
Rambhai Patel & Ors.,
(5) 2004 (76) DRJ 616 between Dr.Reddy's
Laboratories Ltd., Vs. Reddy Pharmaceuticals
Ltd.,
(6) (2002) 2 SCC 147 between Mahendra &
Mahendra Paper Mills Ltd., Vs. Mahindra and
Mahindra Ltd.,
(7) (2002) 3 SCC 65 between Laxmikat V Patel
Vs. Chetanbhai Shah and Anr.,
(8) 1995 SCC Online Bom 312 between Kirloskar
Diesel Recon Pvt. Ltd., & Anr., Vs. Kirsloskar
Proprietary Ltd., and Ors.,
8. The learned counsel for defendant has relied
upon the following citations;
(1) Precious Jewels Vs. Varun Gems,
(2015) 1 SCC 160: (2015) 1 SCC (Civ)
459:2014 SCC Online SC 597;
(2) Telefonaktiebolaget Lm Ericsson(Publ)
Vs. Intex Technologies (India) Ltd.,
2015(62) PTC 90 (Del).
(3) Amar Singh Vs. Union of Inda, (2011) 7
SCC 69,
(4) Joint Action Committee of Air Line
Pilots' Assn of India Vs. DGCA, (2011) 5
SCC 435,
10 O.S.No.5165/2015
(5) ITC Ltd., Vs. George Joseph Fernandes,
(1989) 2 SCC 1.
9. Perused the pleadings, evidence on record,
written synopsis and citations relied by both side.
10. My findings on the above issues are as
under:
Issue No.1)........... Deleted;
Issue No.2)........... In the Affirmative;
Issue No.3)........... In the affirmative;
Addl Issue No.1).... In the Negative;
Addl Issue No.2).... In the Negative;
Issue No.4)...........As per final order
for the following:
11. ISSUES NO.2, ADDITIONAL ISSUE NO.1
AND 2 : These issues are interlinked with each other
and in order to avoid repetition and to appreciate the
evidence on record, they are taken up together for
common discussion.
Before going to decide the disputed facts, the Court
has to keep in mind the following admitted facts.
The plaintiff is the registered trademark holder of
'COTHAS' COFEE' and 'COTHAS'.
11 O.S.No.5165/2015
Defendant No.2 and 3 are the former partners of
the plaintiff and they retired from the plaintiff's
firm under deed of retirement dated
23/12/2013.
Defendant No.2 is the father of the defendant
No.3 and both of them have constituted the
Partnership Firm 'M/s. Cotha Associates i.e.,
defendant No.1'.
Defendant No.1 died during the pendency of the
suit. Defendant No.1 to 3 had applied for
trademark 'COTHA'.
So, after considering the above said admitted facts
and after hearing both side, the points to be decided in
this suit is whether the use of word 'COTHA' by
defendant is similar to the trademark of the plaintiff
'COTHAS COFEE' and whether defendants have got
right to use the name of 'COTHAS' as their family
name.
12. The burden of proving issue No.2 is upon
the plaintiff and additional issues No.1 and 2 is upon
the defendants. In order to prove the case of the
plaintiff has relied upon the evidence of PW1 and
Ex.P.1 to 41 and also evidence of PW2 i.e., Chartered
Accountant.
12 O.S.No.5165/2015
13. PW1 has filed evidence affidavit by
reiterating the contents of the plaint. Ex.P-1 is
Certificate of Registration of plaintiff's firm 'COTHAS
COFFEE CO.,'. Ex.P-2 is the material document i.e.,
Deed of Retirement dated 23/12/2013. The
defendants have not disputed this document. The
present defendant No.2-Mr.Cothas K Prakas and
defendant No.3-C.P.Chandan have retired from the
firm 'COTHAS COFFEE CO.,' and they were shown
as 'retiring partners' and Mr.C.K.Sreenathan and
Mr.C.S.Nithin were shown as 'continuing partners'.
So, under this document defendants No.2 and 3 have
retired from the firm 'COTHAS COFFEE CO.,' with
effect from 09/12/2013. In 3rd page of said
document, it is specifically mentioned that "expressed
their desire to retire from the partnership with effect
from the close of the business hours on the Ninth day
of December Two Thousand Thirteen in terms of
the relevant clauses in the partnership deed, for their
individual benefit"
13 O.S.No.5165/2015
14. As per the condition No.6 of this deed, the
defendant No.2/Mr.Cothas K Prakas had received a
sum of Rs.11,74,25,000/- as full and final settlement
and his son Mr.C.P.Chan has received
Rs.59,90,000/- as full and final settlement. This fact
is also not disputed by the defendants. By receiving
this amount they have given up their rights, title and
interest over the plaintiff's firm 'COTHAS COFFEE
CO.,' as well as over goodwill and trademark, patent
etc., of the plaintiff's firm.
15. Para No.8 of this document specifically
discloses the said fact, which is as under:-
"arising out of his retirement from the firm in
terms of this retirement deed, including the
amounts standing to the credit of his capital and
current accounts as per the final accounts as on
the retirement date, his rights, claims etc.,
whatsoever in the immovable and movable
properties, lease hold rights, possessory rights,
receivables, claims, credits, good will,
trademarks, patents, product names etc., and
no further amount is due to him which requires to
be paid as retiring partner of the said Partnership
or otherwise."
16. Para No.10 of this document is also
necessary to decide this suit, which is as under:-
"a) the amounts paid to them as explained in (4) to
(9) above is the total sum of money payable to
14 O.S.No.5165/2015
them in full and final settlement of all their
claims against the Partnership as well as the
continuing partners arising out of their
retirement from the partnership in terms of this
retirement deed including their rights, interests,
claims etc., whatsoever in the immovable and
movable properties, lease hold rights,
possessory rights, receivables, claims, credits,
goodwill, trade marks, patents, product
names etc., and no further amount is due to
them which requires to be paid to them in
connection with their retirement from the
Partnership or otherwise".
17. As per the condition No.14, it is specifically
agreed by the defendants, which is as under:-
"14. The retiring partners shall not engage for
a period of 3 years from the retirement date in
any activity which is similar to the activities
carried on by the partnership as on this date
either directly or indirectly in any capacity
including as a Proprietor, partner,
shareholder, Director, Managing Director,
employee, Consultant or agent. However, this
restriction is not applicable to the
manufacture and sale of Roasted Coffee
Seed/beans, which forms part of the
business of the partnership thereby the
retiring partners are free to engage themselves
in any capacity in the business of
manufacture and sale of Roasted Coffee
Seeds/beans.
So, the defendants have admitted this document
and as per this document, they have given up their
right, title and interest over the trademark of the
plaintiffs 'COTHAS COFFEE' and they have received
huge amount from the plaintiff's firm agreeing that
15 O.S.No.5165/2015
they will not engage themselves in similar business
permanently. But they were permitted to conduct the
business of manufacture and sale of Roasted Coffee
Seeds/beans. So, they can engage themselves in any
capacity in the business of manufacture and sale of
Roasted Coffee Seeds/beans.
18. It is defence of the defendants that they have
established the firm/defendant No.1 prior to retirement
and hence, they have got right to run the separate
Coffee business. As per Ex.P.2, the date of effect of
Retirement is 9/12/2013 and Deed of retirement is
executed on 23/12/2013. Ex.D.1 is the invoice dated
09/12/2013. So, this document is as on the date of
retirement itself. The case of the defendants No.2 and 3
that they have started their business in the year 2010
itself cannot be believed and defendants have not
produced any documents to prove the said contention.
19. Ex.D2 is the Reconstitution Deed. As per
this document Mr.C.P.Chandan is shown as 1st partner
and his wife Mrs.Girija Chandan is shown as 2nd
partner of partnership firm 'Cotha Associates i.e.,
Defendant No.1'. This document is dated 11/05/2020.
16 O.S.No.5165/2015
In this document it is mentioned that 'Cotha
Associates' is formed on 20/09/2010 but defendants
have not produced the original Partnership Deed of
'Cotha Associates'. So, their contention that they have
constituted this firm prior to their retirement is not
proved by them and hence, it cannot be accepted.
Hence, Ex.D-2/Reconstitution Deed is not helpful to
them to prove their contention.
20. Ex.D.7 and 8 are the invitation of
Inauguration of 'M/s.Cotha Associates shop', the date
of inauguration was shown in Ex.D.8 as on 2/11/2014
and as per this invitation, the inauguration of
'M/s.Cotha Associates & Launch of world's first
infinityRoastTM 1000 Coffee Roaster'. So, as per this
documents defendants were intending to start the
business of roasting of coffee seeds. But as per Ex.P.2/
The Deed of Retirement, the retiring partners have no
right to use the goodwill and trademark of the plaintiff's
'COTHAS COFFEE'. The defendants have specifically
undertaken that they will not use the trademark
'COTHAS COFFEE'.
17 O.S.No.5165/2015
21. But as per Ex.P.20, the defendants have
applied for the trademark of 'COTHA' and they have
shown the user detail as 08/02/2013, which is opposed
by the plaintiff and hence, said application was
abandoned. It is specific defence of the defendant that
they are using the said trademark since 2010 but they
have not produced any documents to prove the same.
As above said, they have retired from the plaintiff's firm
with effect from 09/12/2013 and Ex.D1/invoice is
dated 09/12/2013 and it is not prior to that. So, their
case that they have constituted the firm in the year
2010 itself, and they are using the trademark 'COTHA',
since 08/02/2013 is not proved by them. So, efforts of
the defendants seeking copyright over the 'COTHA'
itself proves that there is an infringement of plaintiff's
trademark 'COTHAS COFFEE'.
22. Ex.P.36 is the notice of opposition filed by
the plaintiff opposing the registration of the trademark
of the defendants 'COTHA'. Ex.P-37 is the Counter
statement filed by the defendants before trademark
authority. Ex.P-38 is the evidence affidavit filed by the
present plaintiff before trademark authority by
18 O.S.No.5165/2015
enclosing the deed of retirement. Ex.P-39 is the order
passed by trademark authority, under which the
application No.2766752 filed by the defendants in
class-32 seeking registration of trademark 'COTHA' is
abandoned. So, the application filed by the defendants
seeking registration of trademark 'COTHA' is
abandoned.
23. Ex.P-13 to 17 are the certified copy of
Trademark Registration Certificates of he plaintiff
'COTHAS COFFEE'. Defendants have not disputed that
plaintiff is the trademark holder of 'COTHAS COFFEE'.
As per section 78 of Trademarks Act 1999,
if Trademark Registration Certificate is valid,
then it give to that person the exclusive right to
use of the mark in relation to those goods or
services.
As per Section 75 of the Trademarks Act
1999, if identical or deceptively similar trade
mark is used then it amounts to infringement of
trademark.
As per section 31 of the Trademarks Act, the
registration of trademark shall be prima-facie
evidence of the validity.
As per Section 28 of the Trademarks Act,
the rights are conferred by the registration, the
registration of a trade mark shall, if valid, give
to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in
relation to the goods or services in respect of
which the trade mark is registered.
19 O.S.No.5165/2015
As per Section 29 of the Trademarks Act, "a
registered trade mark is infringed by a person
who, not being a registered proprietor or a person
using by way of permitted use, uses in the course
of trade, a mark which is identical or
deceptively similar then it amounts to
infringement of trademark and as per Section
29(3), the Court shall presume that it is likely to
cause confusion on the part of the public if both
trademarks are identical or deceptively similar.
In this case, the defendant uses the word 'COTHA'
by removing the one letter 'S' from 'COTHAS' and they
are attempted to use the trademark 'COTHA' or attempt
to claim trademark over the word 'COTHA' amounting
to infringement of plaintiff's trademark 'COTHAS
COFFEE'.
24. The main defence of the defendants that they
are bonafide users of surname 'COTHA' and hence,
there is no any infringement and passing off of the
plaintiff's trademark cannot be accepted.
Section 35 of the Trademarks Act, 1999 which
reads as under:-
"Nothing in this Act shall entitle the
proprietor or a registered user of a
registered trade mark to interfere with
any bonafide use by a person of his own
name or that of his place of business, or of
the name, or of the name of the place of
business, of any of his predecessors in
business, or the use by any person of any
20 O.S.No.5165/2015
bona fide description of the character or
quality of his goods or services."
As per this section, the registered trademark
holder cannot interfere with any bonafide use by a
person of his own name or that of his place of business
etc.,. But the word used in this section is bonafide. So,
in order to seek the protection under section 35 of
Trademarks Act, defendants have to prove that the use
of the word 'COTHA' is bonafide use of their surname.
But in this case, the evidence on record discloses that
defendants No.2 and 3 after their retirement from the
plaintiff's firm have claimed the trademark over the
name 'COTHA' and they claimed that they are using the
'COTHA' since 8/12/2013. But they have not produced
any documents to show that they are bonafidely using
this word 'COTHA'. Ex.D.1 is the invoice dated
09/12/2013 and it is shown that 'Cotha Associates'
is the buyer of the product but this invoice is not in the
name of 'COTHA' alone and this document is not
sufficient to hold that defendants are using the name of
'COTHA' or they have established 'Coth Associates'
under Partnership Deed dated 20/09/2010. Hence, the
use of the surname 'COTHA' cannot be held as
21 O.S.No.5165/2015
bonafide use. Their surname is 'COTHAS' and
defendant No.2 is called Mr.Cothas K Prakas but in this
case, he cannot use his surname 'COTHA' in coffee
business, in view of Deed of Retirement executed by
him and his son. Hence, defendants are not entitle for
the protection u/sec.35 of the Trademarks Act.
25. The Citations of Hon'ble Supreme Court in
Precious Jewels Vs. Varun Gems(2015) 1 SCC 160:
(2015) 1 SCC (Civ) 459:2014 SCC OnLine SC 597 at
page 162, which are relied by the defendants are
perused me but with due respect, I hold that they are
not applicable to the facts of this case. In this case, the
trademark of the plaintiff and trademark of the
defendants are phonetically, visually one and the same
and they are identical one. Defendants have just
removed the letter 'S' from the plaintiff's trademark
'COTHAS' and adopted it. So, they tried to use the
deceptive similar mark, which amounts to infringement
of plaintiff's trademark. Hence, the said citations are
not applicable to the facts of this case.
26. The Citation relied by the defendant in
(1989) 2 SCC 1 at page 23 between ITC Ltd., Vs.
22 O.S.No.5165/2015
George Joseph Fernandes, on section 20 of the Indian
Contract Act, is not at all applicable to the facts of this
case on the point of mistake of fact is not applicable to
the facts of this case.
27. In the judgment relied by the plaintiff in
Health and Glow Retailing Pvt., Ltd., Vs. Dhiren
Krishna Paul & Ors., the Hon'ble Madras High Court
held as under:-
"58.......... it is contended that the use of its
own registered corporate name, by the defendants
is saved by the provisions of Section 35. But in
order to claim such a protection under Section 35,
the defendants will have to satisfy either of the two
pre-conditions viz., a) that it was a bonafide use by
a person of his own name or place of business or
the name or place of business of any of his
predecessors in business or b) that it was a
bonafide description of the character or quality of
his goods or services. If the defendants seek
protection under the first part of section 35, they
must establish that it was a 'bonafide use'. If they
seek protection under the later part of section 35,
they must establish that it was a 'bona fide
descritption."
Hence, the said judgment is applicable to the facts
of this case. In this case, the defendants are not using
the word 'COTHA' bonafidely but after receiving the
amount from the plaintiff, they started using this name.
Hence, defendants are not entitle for the protection
under Section 35 of the Trademarks Act.
23 O.S.No.5165/2015
28. The citation relied by the plaintiff in MFA
No.11075/2006 (CPC) between Adiga's Abhiruchi
and Ors., Vs. Adiga's Fast Food, the Hon'ble High
Court of Karnataka held that the use of name 'ADIGA'
as community name cannot be accepted as its amounts
to infringement of the trademark of the plaintiff and
Hon'ble High Court also rejected the protection u/sec.35
of Trademarks Act. In this case also, the defendant
cannot use the surname 'COTHA' to infringe the
plaintiff's trademark 'COTHAS COFFEE'.
29. The Hon'ble Apex Court in (2004) 76 DRJ
616 between Dr.Reddy's Laboratories Ltd., Vs.
Reddy Pharmaceuticals Limited, held that the use of
the surname 'Reddy' by the defendant is capable of
causing confusion and deception resulting in injury to
the goodwill and reputation of the plaintiff company. So,
in this case also, defendants are trying to establish a
rival business of Coffee by using surname 'COTHA' even
after relinquishing their right of the 'COTHAS
COFFEE'. Hence, said citation is applicable to the facts
of this case.
24 O.S.No.5165/2015
30. The Hon'ble Apex Court in Mahendra &
Mahendra Paper Mills Limited Vs. Mahindra &
Mahindra Ltd., reported in (2002) 2 SCC 147, held
that The Court has to see whether there is likelihood of
deception or confusion among the customers. Looking to
the trademark of the plaintiff and even trade mark of
the defendant, it is crystal clear that 'COTHAS COFFEE'
and 'COTHA' are certainly similar, identical and
matching to each other. Hence, defendants cannot use
the deceptive trademark.
31. The Hon'ble Apex court in Ramdev Food
Products Pvt. Ltd., Vs. Arvindbhai Rambhai Patel
and Ors., reported in MANU/SC/3725/2006, held as
under:-
"Although, the defendant may not be using the
actual trade mark of the plaintiff, the get up of the
defendant's goods may be so much like the
plaintiff's that a clear case of passing off could be
proved. It is also possible that the defendant may
be using the plaintiff's mark, the get up of the
defendant's goods may be so different from the
get up of the plaintiff's goods and the prices also
may be so different that there would be no
probability of deception of the public. However, in
an infringement action, an injunction would be
issued if it is proved that the defendant is
improperly using the plaintiff's mark. In an action
for infringement where the defendant's trade
mark is identical with the plaintiff's mark, the
Court will not enquire whether the infringement is
25 O.S.No.5165/2015
such as is likely to deceive or cause confusion.
The test, therefore, is as to likelihood of confusion
or deception arising from similarity of marks is the
same both in infringement and passing off
actions."
32. The Hon'ble Apex Court in Laxmikanth V
Patel Vs. Chetanbhai Shah and another reported in
(2002) 3 SCC 65, held as under:-
"A person may sell his goods or deliver his
services such as in case of a profession under a
trading name or style. With the lapse of time such
business or services associated with a person
acquire a reputation or goodwill which becomes a
property which is protected by courts. A competitor
initiating sale of goods or services in the same
name or by imitating that name results in injury to
the business of one who has the property in that
name. The law does not permit any one to carry on
his business in such a way as would persuade the
customers or clients in believing that the goods or
services belonging to someone else are his or are
associated therewith. It does not matter whether
the latter person does so fraudulently or otherwise.
The reasons are two. Firstly, honesty and fair play
are, and ought to be, the basic policies in the world
of business. Secondly, when a person adopts or
intends to adopt a name in connection with his
business or services which already belongs to
someone else it results in confusion and has
propensity of diverting the customers and clients of
someone else to himself and thereby resulting in
injury."
So, by applying the above said citations to the
facts of this case, I hold that this is the clear cut case of
infringement of trademark of the plaintiff. The
defendants No.2 and 3 after their retirement from the
26 O.S.No.5165/2015
plaintiff's firm by receiving huge amount and after given
up their right to use the trademark of the plaintiff, have
tried to use the trademark of the plaintiff by removing
one letter 'S' from 'COTHAS COFFEE'. Hence, I answer
issue No.2 in the affirmative and additional issue No.1
and 2 in the negative.
33. ISSUE NO. 3 AND 4:- In view of my answer
to Issues as stated above in the affirmative, I hold that
the plaintiff is entitle for the relief of permanent
injunction. Hence, I proceed to pass the following:
The suit of the plaintiff is hereby
decreed with costs.
All the defendants of anybody on their
behalf are restrained from infringing
and passing off of the plaintiff's
trademark 'COTHAS' and 'COTHAS
COFFEE' by using the offending
trademark 'COTHA' by granting decree
of permanent injunction.
All the defendants or anybody on their
behalf are restrained from selling,
offering for sale, stocking etc., of their
products under the trademark
'COTHA', which is deceptively similar
27 O.S.No.5165/2015
to the trademark of the plaintiff
'COTHAS' and 'COTHAS COFFEE' by
granting the decree of permanent
injunction.
The decree prayed by the plaintiff
seeking permanent injunction as
against defendants No.2 and 3 from
using the word 'COTHA' in any
business relating to 'COFFEE' except
manufacturing and sale of roasted
coffee seed/bean till 23/12/2016 is
rejected since the agreed period
under retirement deed is over or
lapsed or this relief has become
infractuious.
Draw a decree accordingly.
***
[Dictated to the Stenographer, after transcription, the Script is corrected directly in computer, signed and then pronounced by me, in the Open Court on this the 1st day of October 2024.] [Chinnannavar Rajesh Sadashiv ] XVIII Additional City Civil Judge.
BENGALURU.
1. List of witnesses examined on behalf:
a). Plaintiff's side:
PW.1 :: C.S.Nitin
PW.2 :: B.Ramesh Reddy
b). Defendant's side:
DW.1 :: C.P.Chandan
28 O.S.No.5165/2015
2. List of documents marked on behalf of:
a). Plaintiff's side:
Ex.P.1 :: Certified copy of Registration of Firm; Ex.P.2 :: Certified copy of deed of retirement ;
Ex.P.3 :: Certified copy of Certificate issued by Chartered Accountant;
Ex.P.4 :: Certified copies of packing pouches of to 12 plaintiff (9 in No.s);
Ex.P.13 :: Certified copies of trade mark to 17 registration certificates (5 in No.s); Ex.P.18 :: Certified copy of letter dated 06/03/2015 in connection with renewal of trade mark along with Form-12 and receipt for payment of prescribed fee;
Ex.P.19 :: Certified copy of letter dated 06/03/2015 in connection with recordal of subsequent proprietors with Form TM 12 & 24;
Ex.P.20 :: Online print out copy of trade mark registration application along with 65B certificate (contains two sheet);
Ex.P.21 :: Certified copy of audited balance sheet as on 31.03.2003;
Ex.P.22 :: Certified copy of audited balance sheet as on 31.03.2004;
Ex.P.23 :: certified copy of audited balance sheet as on 31.03.2006;
Ex.P.24 :: certified copy of audited balance sheet as on 31.03.2007;
Ex.P.25 :: certified copy of audited balance sheet as on 31.03.2008;
Ex.P.26 :: certified copy of audited balance sheet as on 31.03.2009;
Ex.P.27 :: certified copy of audited balance sheet as on 31.03.2010;29 O.S.No.5165/2015
Ex.P.28 :: Certified copy of audited balance sheet as on 31.03.2011;
Ex.P.29 :: Certified copy of audited balance sheet as on 31.03.2012;
Ex.P.30 :: Certified copy of audited balance sheet as on 31.03.2013;
Ex.P.31 :: Certified copy of audited balance sheet as on 31.03.2014;
Ex.P.32 :: Certified copy of audited balance sheet as on 31.03.2015;
Ex.P.33 :: Certified copy of audited balance sheet as on 31.03.2016;
Ex.P.34 :: certified copy of audited balance sheet as on 31.03.2017;
Ex.P.35 :: certified copy of print out of the ownership details of the domain name 'cothas.com';
Ex.P.36 :: Online print out of notice of opposition with enclosures;
Ex.P.37 :: Online printout of counter statement with enclosures;
Ex.P.38 :: Online printout of evidence in support of opposition with enclosures;
Ex.P.39 :: Online printout of order;
Ex.P.40 :: Online printout of letter written of plaintiff's trade mark advocate to the plaintiff;
Ex.P.41 :: Certificate U/sec 65(B) of Indian Evidence Act in respect of Ex.P.36 to Ex.P.40.
b). Defendant's side:
Ex.D1 :: Invoice dated 09/12/2013; Ex.D.2 :: Reconstitution deed dated 11.05.2020;30 O.S.No.5165/2015
Ex.D.3 :: Internet copy of the website; Ex.D.4 :: Original declaration dated 19.10.1984;
Ex.D.5 & 6 :: Original passport and PAN card of deceased defendant No.2 Cothas K Prakas;
Ex.D.7 & 8 :: Original invitation cards of defendant No.1 (2 in No.s) ;
Ex.D.9 &10 :: Notarized copies of PAN card and passport of defendant No.3.
XVIII Additional City Civil Judge.
BENGALURU.