Bangalore District Court
Established The Reputation And Good ... vs Is Carrying On The Business With The Mark ... on 16 April, 2021
Com.O.S.No.12/2019
(Old O.S.No.3/2012)
IN THE COURT OF LXXXII ADDL.CITY CIVIL & SESSIONS
JUDGE,AT BENGALURU (CCH.83)
THIS THE 16TH DAY OF APRIL 2021
PRESENT:
SRI.DEVARAJA BHAT.M.,B.COM,LL.B.,
LXXXII ADDL.CITY CIVIL & SESSIONS JUDGE,
BENGALURU.
Com.O.S.No.12/2019
(Old O.S.No.3/2012)
BETWEEN:
M/s Sri.Lakshmi Srinivasa
Agro Foods, a Partnership
Firm, registered under the
Indian Partnership Act,
1932, having its
Registered Office at
S.No.31/1, 43/3, NH-4,
Tumkur Road,
Vishweshwarapura Village,
Nelamangala Taluk,
Bengaluru Rural District -
562 123, Represented by
its Partner Sri. M.K.Shiva
Kumar, aged about 38
years, residing at
Bengaluru.
: PLAINTIFF.
(Represented by
Smt.B.Mallika, Advocate.)
AND
Com.O.S.No.12/2019
(Old O.S.No.3/2012)
1. M/s Ravi Enterprises,
No.491, Anekonda, Inside
K.M.C.Rice Mill,
Davanagere - 577 001,
represented by its
Proprietor Sri.Uluvayya.
2.Sri Chennabasaveshwara
Enterprises, Merchants &
Commission Agents,
No.3694/A, M.C.C. 'A'
Block, Davanagere - 577
004, represented by its
Proprietor Sri.
S.G.Uluvayya.
3. SSI Driers, Sri Srinivasa
Industries, No.587,
Anekonda, Basapura Road,
Davanagere, represented
by its Proprietor Sri.
Satish.
: DEFENDANTS
(Defendants represented
by Sri.B.M.Halaswamy -
Advocate)
Date of Institution of the 03.09.2012
suit
Nature of the suit (suit on Suit for Permanent Injunction for
pronote, suit for declaration infringement of Trade Mark
& Possession, Suit for
injunction etc.)
Date of commencement of 07.11.2017
recording of evidence
Date of First Case - Not Held - (Transferred case)
Com.O.S.No.12/2019
(Old O.S.No.3/2012)
Management Hearing
Time taken for disposal 16 days
from the date of conclusion
of Arguments
Date on which judgment 16.04.2021
was pronounced
Total Duration Years/s Month/s Day/s
08 07 13
(DEVARAJA BHAT.M),
LXXXII Addl.City Civil & Sessions Judge,
Bengaluru.
JUDGMENT
This is a Suit filed under Section 134 of the Trade Marks Act read with Section 62 of the Copyright Act for the relief of Permanent Injunction restraining the Defendants from infringing the Trade Mark of the Plaintiff, for passing of the Copyright of the Plaintiff and to direct the Defendants to surrender the unused offending Trade Marks Labels, gunny bags, bill books, advertising material, hoardings, broachers, visiting cards and to render the accounts to the Plaintiff by way of damages for passing off committed by the Defendants.
2. The Brief facts as narrated in the Plaint are as follows:-
Com.O.S.No.12/2019 (Old O.S.No.3/2012) The Plaintiff is a Firm registered in 2002, carrying on the business of manufacturing and marketing of Sortex Buhler Rice under the brand name "Lakshmi Srinivasa Brand" with the portrait of Goddess Lakshmi and Lord Srinivasa on the gunny bags of their Brand. The Plaintiff has applied for registration of Trade Mark and the process of the same is in progress. The Plaintiff established the reputation and Good Will with respect to its Rice Brand due to its intrinsic quality and honesty in using the Trade Mark/Copyright over the number of years. The Plaintiff has been receiving the Orders from all over Karnataka as well as from the neighbouring States including Tamilnadu, the Trade Mark of the Plaintiff has become very popular all over India due to their excellent quality and extraordinary marketing. The Defendants started marketing the Sorted Buhler Rice since 2008 under the name and style "Sree Lakshmi Srinivasa Gold"
with the same portrait of Goddess Lakshmi and Lord Srinivasa on the gunny bags of their Brands, which are phonetically, structurally confusing and deceptively similar to the Trade Mark/Copyright adopted by the Plaintiff, with malafide intention and has been deliberately designed to deceive the public/customers. Hence, the sales turnover of the Plaintiff is being gradually decreased. Therefore, the Plaintiff got issued a Legal Notice to the Defendants on 08.10.2011, that though the Com.O.S.No.12/2019 (Old O.S.No.3/2012) same was served on the Defendants, they did not complied with the demands of the Plaintiff and they have not replied to the same. Hence, the Plaintiff has filed the present suit for the above mentioned reliefs.
3. The Defendants No.1 & 2 filed their written statement and their contentions in brief are as follows:-
The Plaintiff and the Proprietor of the Defendants are friends and known to each other since several years. The 1 st Defendant is carrying on the business with the mark of "Lakshmi Srinivasa" from 2005 itself. The 2 nd Defendant using the mark from 1994 only. The Defendants are the prior user of the Trade Mark. The Plaintiff and the Defendants are carrying on business with their marks known to each other since the start of business of the Defendants. The Plaintiff and the Defendants have continuously discussed and deliberated upon their business interest together. The Plaintiff was well aware of the business and the Trade Mark of "Sree Lakshmi Srinivasa Gold"
used by the Defendants. The suit of the Plaintiff is barred by delay, latches and acquiescence on the part of the Plaintiff. The Trade Mark used by the Defendants is not identical or deceptively similar with that of the Plaintiff. The Plaintiff is using the portrait of Goddess Lakshmi and Lord Srinivasa on the Com.O.S.No.12/2019 (Old O.S.No.3/2012) gunny bags with the caption "Lakshmi Srinivasa Brand", whereas the Defendants were using the same portraits on the bags with the caption "Lakshmi Srinivasa". The place of origin of Plaintiff's goods and the place of origin of Defendants' goods are clearly made out on their respective Trade Marks. Though there is little similarity in respect of the portraits on the bags, the place of manufacture of rice is clearly spelt out and hence, there is no chance or occasion or likelihood of deception or passing conclusion in the minds of the purchasers of rice. The Trade Mark being used by the Plaintiff is not capable of registration under the Trade Marks Act as it has no distinctiveness of its own. Hence, the Defendants prayed to dismiss the suit.
4. Based on the above contentions of both parties, the then Presiding Officer of I Addl.District & Sessions Court, Bengaluru Rural District, has framed the following Issues on 01.06.2017.
1. Does the Plaintiff prove that Trade Mark used by the Defendants is identical or deceptively similar with that of the Plaintiff's Trade Mark and the use of mark or symbol is likely to deceive or cause confusion in the minds of public as alleged in the Plaint ?
Com.O.S.No.12/2019 (Old O.S.No.3/2012)
2. Whether the Plaintiff is entitled for Permanent Injunction against the Defendants as prayed ?
3. What Order ?
5. In order to prove the contentions of the Plaintiff, the partner of the Plaintiff Firm Sri. M.K. Shiva Kumar is examined as P.W.1 and got marked Exs.P.1 to P.20.
6. In order to prove the contentions of the Defendants, the Proprietor of the Defendants No.1 & 2 Sri. S.G.Uluvayya is examined as D.W.1 and got marked Exs.D.1 & D.2.
7. The Advocate for the Plaintiff submitted his Written Arguments on 12.12.2018. When such being the case, on 19.01.2019, this case was transferred to this Court. Thereafter, on 27.02.2020, the Advocate for the Defendants has filed his Written Arguments. Thereafter, in view of Closure of Courts due to COVID-19, the case was not proceeded and after resuming the normal work, there was continuous non-representation of both the advocates in spite of issuance of Court Notice. Hence, the oral arguments of both advocates taken as heard on 01.04.2021. However, today morning the Advocate for the Defendant has filed written arguments without serving copy to the Advocate for the Plaintiff. But, the Com.O.S.No.12/2019 (Old O.S.No.3/2012) said written arguments is the same copy of the written arguments submitted by the Advocate for the Defendant on 27.02.2020. One thing to be noted here is that, as on today, there is a dedicated Commercial Court functioning at Bengaluru Rural District also. Since both parties filed their written arguments before establishment of said Dedicated Commercial Court at Bengaluru Rural District, as per Proviso to Section 15(2) of the Commercial Court Act, I proceeded to pass this Judgment.
8. My findings are as follows:-
Issue No.1 : In the Negative Issue No.2 : In the Negative Issue No.3 : As per the final Order for the following reasons.
REASONS
9. Issue No. 1: - For better understanding of the contentions of both parties, the pleadings, evidence and documents produced by both parties are to be appreciated in chronological order.
10. According to the Plaintiff, the Plaintiff is carrying on the business of manufacturing and marketing of Sortex Buhler Rice Com.O.S.No.12/2019 (Old O.S.No.3/2012) under the Brand Name "Lakshmi Srinivasa Brand" with the portrait of Goddess Lakshmi and Lord Srinivasa on the gunny bags since 2002-2003. The Plaintiff's Firm was registered on 11.06.2002 as per the Certificate of Registration, marked as Ex.P.1. Ex.P.2 is the Acknowledgement of Registration of Firm dated 11.06.2002. The Plaintiff Firm was also registered under the Karnataka Sales Tax Act and Central Sales Tax Act on 30.07.2002 as per Ex.P.3 and Ex.P.4. On 26.06.2003 M/s S.Rasheed of Raichur had supplied empty gunny bags to the Plaintiff Firm as per Ex.P.12/Credit Bill. However, in Ex.P.12, there is no indication that the said empty gunny bags were containing any portrait of Goddess Lakshmi and Lord Srinivasa with the Brand name as pleaded by the Plaintiff. Further, the author of Ex.P.12 is also not examined.
11. The Ex.P.5 to Ex.P.8 are the Tax Invoices dated 28.06.2003, 01.06.2004, 06.06.2006, and 11.06.2008. However, in these Tax Invoices there is no such Trade Mark or Brand name with the Portrait of Goddess Lakshmi and Lord Srinivasa. But, it is pertinent to note that on the top of the said Invoices and in the middle of the said Invoices there is a Brand Name with Lakshmi Srinivasa, but it is totally different than the pleaded one.
Com.O.S.No.12/2019 (Old O.S.No.3/2012)
12. The dispute between the parties, according to the Plaintiff is that the Defendants started marketing the Sortex Bulher Rice under the name and style "Sri Lakshmi Srinivasa Gold" with the same portrait of Goddess Lakshmi and Lord Srinivasa on the gunny bags in the year 2008 and that the brand of the Defendants are phonetically, structurally confusing and deceptively similar to the Trade Mark/Copyright adopted by the Plaintiff.
13. The Ex.P.9 is another Tax Invoice dated 09.06.2010.However, in this Tax Invoice, there is no such Trade Mark or Brand name with the Portrait of Goddess Lakshmi and Lord Srinivasa. But, it is pertinent to note that on the top of the said Invoice and in the middle of the said Invoice there is a Brand Name with Lakshmi Srinivasa, but it is totally different than the pleaded one.
14. When such being the case, the Plaintiff has applied for Registration of the Trade Mark on 24.01.2011 as could be seen from Ex.P.20/Certificate of Registration of Trade Mark. However, he has not produced the copy of the Application dated 24.01.2011 submitted for registration of his Trade Mark.
Com.O.S.No.12/2019 (Old O.S.No.3/2012)
15. On 08.10.2011, the Plaintiff got issued a Legal Notice to the Defendants as per Ex.P.14. The said Legal Notices were served on the Defendants as could be seen from the Postal Acknowledgements marked as Exs.P.15 to P.17. The Plaintiff has contended at Para No.13 of the Plaint that the Defendants have neither complied with the demands of the Plaintiff nor the Defendants have replied to the Ex.P.14/Notice of the Plaintiff. However, the P.W.1, at Para-13 of his Affidavit filed in-lieu of oral Examination-in-Chief, has deposed that the Defendant has replied to the Ex.P.14 Notice denying all the facts and revealing the wrong information and that in the said reply, the Defendant has stated that he is using the Brand "Sree Lakshmi Srinivasa"
since 1999, but in the Trade Mark/Copyright Application which has been filed by the Defendant himself before the Trade Mark/Copyright Registry, he has mentioned that he is using the same Brand since 2005, which are contradictory to each other and the said Reply dated 06.12.2011 is produced by the Plaintiff and he prayed for marking the said document as exhibit. In fact, no such Reply dated 06.12.2011 is produced and marked on behalf of the Plaintiff.
16. It is to be noted that after service of the Ex.P.14 Legal Notice, the 1st Defendant applied for registration of Trade Mark Com.O.S.No.12/2019 (Old O.S.No.3/2012) on 22.12.2011 as could be seen from Ex.D.1/Certificate of Registration of Trade Mark.
17. The Ex.P.10 is another Tax Invoice dated 06.06.2012. It is to be noted that this Tax Invoice was issued after the issuance of Legal Notice as per Ex.P.14. However, in this Tax Invoice also there is no such Trade Mark or Brand name with the Portrait of Goddess Lakshmi and Lord Srinivasa. But, it is pertinent to note that on the top of the said Invoice and in the middle of the said Invoice there is a Brand Name with Lakshmi Srinivasa, but it is totally different than the pleaded one.
18. Ex.P.13 is a Letter issued by the Whole Sale Dealer Sri. S.Balaraman and according to the Plaintiff, who is a common Dealer both the Plaintiff and the Defendants and he issued the said Letter that the customers are being confused by the Defendants' Brands, as per the contention in Para-6 of the Plaint and as per Para-6 of the Affidavit filed in-lieu of Examination-in-Chief of P.W.1. Further, the author of Ex.P.13 is also not examined.
19. Thereafter, on 03.09.2012 this suit is filed against the Defendants.
Com.O.S.No.12/2019 (Old O.S.No.3/2012)
20. The Ex.P.11 is another Tax Invoice dated 28.08.2012. It is to be noted that this Tax Invoice was issued after the institution of the Suit. However, in this Tax Invoice also there is no such Trade Mark or Brand name with the Portrait of Goddess Lakshmi and Lord Srinivasa. But, it is pertinent to note that on the top of the said Invoice and in the middle of the said Invoice there is a Brand Name with Lakshmi Srinivasa, but it is totally different than the pleaded one.
21. The 1st Defendant has obtained the Certificate of Registration of Trade Mark on 30.04.2014 as per Ex.D.1. The Plaintiff has not challenged the Ex.D.1 in any proper Forum. When such being the case, during the pendency of this suit, when the 1st Defendant has obtained the Ex.D.1, he cannot be restrained by way of temporary injunction as prayed by the Plaintiff in this suit.
22. It is to be noted that, as on the date of issuance of Ex.D.1, the Plaintiff has not obtained any registered Trade Mark Certificate and he obtained the same nearly after two years from Ex.D.1. The Plaintiff has obtained the Certificate of Registration of Trade Mark on 28.06.2016 as per Ex.P.20. Ex.P.20(A) is the Annexure to the said Certificate of Registration Com.O.S.No.12/2019 (Old O.S.No.3/2012) of Trade Mark, which depicts the Registered Trade Mark of the Plaintiff.
23. Ex.P.18 and P.19 are the Plastic Bags. The PW.1 during his cross-examination has deposed that he had applied for the Trade Mark with the logo as seen in Ex.P.19, but it was refused. Ex.D.2 is also a Plastic Bag. It is to be noted that the Ex.D.2 was confronted to the PW.1 during his cross-examination and he has also admitted that the Defendant was selling Rice in the said bag and that there is difference in colour combination printed on the said bag.
24. Further, the PW.1 during his cross-examination has deposed that while filing application in the year 2011, he requested to issue Trade Mark in respect of the Picture/Logo as visible in Page No.2 of Ex.P.20, which is marked as Ex.P.20(A) and that at the time of filing this suit, he was using the Trade Mark as per Ex.P.20(A). He has further deposed that in the present suit he did not refer to the Logo at Ex.P.20(A). Therefore, there is no substance in the contentions of the Plaintiff.
Com.O.S.No.12/2019 (Old O.S.No.3/2012)
25. Further, along with the written arguments of the Advocate for the Plaintiff, he has relied upon the following decisions:-
1. A.I.R. - 1990 - KERALA - 119 (National Garments, Kaloor, Cochin vs. National Apparel, Ernakulam, Cochin).
2. A.I.R. - 1991 - KAR - 303 (M/s Cadila Laboratories (P) Ltd., Ahmedabad & Another vs. M/s Kamath Atul & Co., Nellikeri, Kumta.
3. I.L.R. - 1993 - KAR - 1222 (Sushil Vasudev vs. M/s Quality Frozen Foods Pvt.Ltd.)
4. 1996(5) - S.C.C. - 714 (N.R. Dongre & Others vs. Whirlpool Corporation & Another)
5. A.I.R. - 2002 - S.C. - 117 (Mahendra & Mahendra Paper Mills Ltd. vs. Mahindra & Mahindra Ltd.)
6. A.I.R. - 2002 - S.C. - 275 (Lakshmikant V. Patel vs. Chetanbhat Shah & Another)
7. I.L.R. - 2004 - KAR - 4325 (M/s Soore Detergents vs. D. Mohanraj & Another)
8. 2004 (3) - S.C.C. - 90 (Midas Hygene Industries (P) Ltd. & Another vs. Sudheer Bhatia & Others)
26. In the said decisions, it is explained the principles for granting or refusing the relief of injunction in respect of Com.O.S.No.12/2019 (Old O.S.No.3/2012) intellectual properties like Trade Marks, Passing of etc., wherein likelihood of deception or confusion is established. In the present case, except the sole testimony of the PW.1, no other independent witnesses are examined to prove the said confusion among the products/Marks/Logo used by the both parties. Therefore, the ratio of the said decisions are not applicable to the present case.
27. The Plaintiff has further contended that by using a similar Mark by the Defendant the Sales Turnover of the Plaintiff is being gradually decreased and his reputation, goodwill as well as business prospects have been severely affected. However, during his cross-examination, he has deposed as follows:-
"It may be true that the drop in price of the paddy is also one of the ground for decrease in the Sales Turnover. It may be true if there is an increase in production of paddy in Tamilnadu or Andhra Pradesh, there may be decrease in the Sales Turnover of our Company."
28. Further, he has not produced the bills or books of accounts pertaining to the Sales Turnover of the relevant year. Therefore, the Plaintiff has failed to prove the decrease in the Sales Turnover as contended by him. Therefore, the Plaintiff has failed to prove that the Trade Mark used by the Defendants is Com.O.S.No.12/2019 (Old O.S.No.3/2012) identical or deceptively similar with that of the Plaintiff's Trade Mark and the use of mark or symbol is likely to deceive or cause confusion in the minds of public. Therefore, I answer this Issue in Negative.
29. Issue No. 2: - In view of my above discussions, observations and findings while answering Issue No.1 and for the same reasons, the Plaintiff is not entitled for the relief of injunction as prayed by him. Hence, I answer this Issue in the "Negative".
30. Issue No. 3: Therefore, we proceed to pass the following Order.
ORDER The Suit of the Plaintiff is dismissed.
The Plaintiff is hereby directed to pay cost of this suit to the Defendants. The Advocate for the Defendants is directed to file Memorandum of Cost before the Office within 5 days from today as required under Rule 99 and 100 of Karnataka Civil Rules of Practice.
The Office is directed to send copy of this judgment to Plaintiff and Defendants to their email ID as required under Order XX Rule 1 of the Civil Procedure Code read with Section 16 of the Commercial Courts Act.
Com.O.S.No.12/2019 (Old O.S.No.3/2012) Draw Decree accordingly.
The Office is directed to send copy of this Judgment to Plaintiff and Defendants to their email ID as required under Order XX Rule 1 of the Civil Procedure Code as amended under Section 16 of the Commercial Courts Act.
(Dictated to the Judgment Writer, typed by her directly on the computer, verified and pronounced in the open court on 16th day of April 2021).
(DEVARAJA BHAT.M.), LXXXII Addl. City Civil & Sessions Judge, BENGALURU.
ANNEXURE LIST OF WITNESSES EXAMINED ON BEHALF OF THE PLAINTIFF:
PW.1 Sri. M.K. Shivakumar LIST OF DOCUMENTS MARKED ON BEHALF OF THE PLAINTIFF:
Ex.P.1 Certificate of Registration of Plaintiff's Firm Ex.P.2 Acknowledgement of Registration of Firm Com.O.S.No.12/2019 (Old O.S.No.3/2012) Ex.P.3 Registration Certificate under Karnataka Sales Tax Act Ex.P.4 Registration Certificate under Central Sales Tax Act Ex.P.5 Tax Invoice Ex.P.6 Tax Invoice Ex.P.7 Tax Invoice Ex.P.8 Tax Invoice Ex.P.9 Tax Invoice Ex.P.10 Tax Invoice Ex.P.11 Tax Invoice Ex.P.12 Credit Bill Ex.P.13 Letter issued by the Whole Sale Dealer Sri. S.Balaraman Ex.P.14 Legal Notice dated 08.10.2011 Ex.P.15 Postal Acknowledgement Ex.P.16 Postal Acknowledgement Ex.P.17 Postal Acknowledgement Ex.P.18 Plastic bag of Plaintiff's brand Ex.P.19 Plastic bag of Defendant's brand Ex.P.20 Certificate of Registration of Trade Mark dated 28.06.2016 Ex.P.20(A) Annexure to Certificate Com.O.S.No.12/2019 (Old O.S.No.3/2012) LIST OF WITNESSES EXAMINED ON BEHALF OF THE DEFENDANTS:
D.W.1 Sri. S.G.Uluvayya LIST OF DOCUMENTS MARKED ON BEHALF OF THE DEFENDANTS:
Ex.D.1 Certificate of Registration of Trade Mark dated 30.04.2014 Ex.D.2 Plastic bag (DEVARAJA BHAT.M.), LXXXII Addl. City Civil & Sessions Judge, BENGALURU.
Com.O.S.No.12/2019 (Old O.S.No.3/2012) The Judgment is pronounced in Open Court today. The operative portion of the said judgment is as follows:-
ORDER The Suit of the Plaintiff is dismissed.
The Plaintiff is hereby
directed to pay cost of
this suit to the
Defendants. The
Advocate for the
Defendants is directed to
file Memorandum of Cost
before the Office within 5
days from today as
required under Rule 99
and 100 of Karnataka
Civil Rules of Practice.
The Office is directed
to send copy of this
judgment to Plaintiff and
Defendants to their email
ID as required under
Order XX Rule 1 of the
Civil Procedure Code
read with Section 16 of
the Commercial Courts
Act.
Com.O.S.No.12/2019
(Old O.S.No.3/2012)
Draw Decree
accordingly.
The Office is directed
to send copy of this
Judgment to Plaintiff and
Defendants to their email
ID as required under
Order XX Rule 1 of the
Civil Procedure Code as
amended under Section
16 of the Commercial
Courts Act.
(Vide my separate detailed
Judgment dated 16.04.2021)
(Typed as per my dictation).
(DEVARAJA BHAT.M.),
LXXXII Addl. City Civil &
Sessions Judge, Bengaluru.
Com.O.S.No.12/2019
(Old O.S.No.3/2012)