Madras High Court
Hatsun Agro Products Ltd vs M/S.Arokiya Foods on 11 August, 2022
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.S.No.34 of 2015
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment reserved on 12.07.2022
Judgment pronounced on 11.08.2022
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
Civil Suit No.34 of 2015
Hatsun Agro Products Ltd.,
Having Registered Office at
No.1/20-A, Rajiv Gandhi Salai(OMR),
Karapakkam, Chennai-600 097.
and also carrying on its business at,
Old No.AD-83/New No.AD13,
Anna Nagar, Opp. IOB Towers Branch,
Chennai – 600 040. ... Plaintiff
vs.
M/s.AROKIYA FOODS,
A partnership Firm,
Rep. by its partners Mr.V.Shanmugam and
Mr.S.Murugesan,
Having office at No.249,Semmandampalayam Road,
Vellakovil, Tirupur – 638 111 and also
carrying on its business at
No.81-A, Azhagapuri Nagar, Near Indane Gas Company,
Vellakovil, Tirupur – 638 111.
(Amended as per order dated 24.09.2020 in
A.No.2113 of 2020) ... Defendant
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C.S.No.34 of 2015
The suit is filed under Order VII Rule 1of CPC r/w Order IV Rule
1 of High Court O.S. Rules and Section 134 and 135 of the Trade Marks
Act, 1999 and Section 55 & 62 of the Copyright Act, (a) For permanent
injunction restraining the defendant by itself, its agents, servants or any one
claiming through it from in any manner infringing the plaintiff's Trade
Marks as described in the Schedule hereunder by using the offending
trademark ''AROKYA'' written in Tamil or any other trademark or marks
which are in any way identical or deceptively similar or colourable imitation
of the plaintiff's trademarks described in the Schedule to the plaint.
(b) For permanent injunction restraining the defendant by itself,
its agents, servants or any one claiming through it from in any manner
passing off its products as that of the plaintiff by using the offending
trademark label AROKIYA written in Tamil and English or by using any
other trademark or trademark label which is similar, deceptively similar or
identical to that of the plaintiff's trademark 'AROKYA' either by
manufacturing or selling or offering for sale or in any manner advertising
the same.
(c) Granting permanent injunction restraining the defendant by
itself, its servants or agents or anyone claiming through it from in any
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C.S.No.34 of 2015
manner infrining the plaintiff's copyright in the artistic work over the
trademark label 'AROKYA' by using the offending label or any other label
or labels which are in any way a reproduction of the plaintiff's copyright
label AROKYA.
(d) For permanent injunction restraining the defendant by itself,
its agents, servants or any one claiming through it from in any manner
infringing the plaintiff's Trade Marks as described in the Schedule
hereunder by using the offending trademark ''AROKYA'' or any other
tradename or marks which are in any way identical or deceptively similar or
colourable imitation of the plaintiff's trademarks as described in the
schedule to the plaint.
(e) Directing the defendant to surrender to the plaintiff the entire
products with the offending labels, stocks with offending labels
togetherwith the blocks and dies, name boards, sign boards etc for
destruction.
(f) Directing the defendant to render true and faithful accounts of
the products earned by them through the sale of the offending products
bearing the offending trademark label and directing payment of such profits
to the plaintiff and (g) to pay the costs of the suit.
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C.S.No.34 of 2015
For Plaintiff : Mr.Surya Senthil
Assisted by Mr.Prashant Alai
for M/s.Surana and Surana
For Defendant : Mr.R.Sathish Kumar
Assisted by Mr.A.K.Rajaraman
JUDGMENT
The plaintiff filed the suit in respect of alleged trade mark infringement and passing off, and claimed several reliefs in respect thereto.
2. The plaintiff stated that it is engaged in the manufacture of dairy products. In relation thereto, it stated that the trademark ''AROKYA'' was adopted more than two decades ago and that an application for registration was filed in June 1995 after using the said mark for a considerable period of time. Pursuant thereto, it is stated that registrations were granted in Class 29 and Class 32 between 14.06.1995 and 13.02.2008. The plaintiff further asserted that the trademark ''AROKYA'' has acquired a secondary meaning through long, open, honest and continuous use. The plaintiff referred to the substantial growth in its annual turnover from the sale of products marketed under the trademark ''AROKYA''. In specific, it _____________ https://www.mhc.tn.gov.in/judis Page No.4 of 48 C.S.No.34 of 2015 stated that the annual turnover increased from Rs.45.33 lakhs in the financial year 1998 - 1999 to Rs.1,452.38 lakhs in the financial year 2013- 2014. Similarly, the over all sales turnover and advertising expenditure was set out in paragraph 13 of the plaint to establish the reputation and goodwill of the plaintiff. The plaintiff further stated that the trademark ''AROKYA'' has attained the status of a well known trademark within the meaning of Section 2(zg) read with Section 29(4) of the Trade Marks Act,1999 (the Trade Marks Act). The plaintiff also stated that it came to know that the defendant was using the mark ''AROKIYA'' in relation to its idly and dosa batter in July 2009. Immediately, the plaintiff issued a cease and desist notice to the defendant. On receipt thereof, by reply dated 04.08.2009, the defendant attempted to justify use of the trade mark by contending that the defendant had not violated any rights of the plaintiff because the defendant is the registered proprietor of the trademark in Class 30. In these circumstances, the plaintiff filed the suit.
3. The defendant refuted these contentions by filing a written statement. In the written statement, the defendant stated that it has used the trademark ''AROKIYA'' since the year 2001. The defendant also stated that _____________ https://www.mhc.tn.gov.in/judis Page No.5 of 48 C.S.No.34 of 2015 it is the registered proprietor of the trademark ''AROKIYA''. The defendant stated that the nature of goods manufactured and marketed by the defendant are fundamentally different from the plaintiff's goods. The defendant also referred to the notice issued by the plaintiff in the year 2009 and the reply thereto from the defendant. Consequently, it was asserted that the present suit is an abuse of process. The defendant stated that all the products in respect of which its mark is applied fall under Class 30. With a view to protect its intellectual property, the defendant applied for and obtained registration. The defendant categorically denied the assertion that its colour scheme and get up are deceptively similar to that of the plaintiff by explaining the reasons for choosing the combination of white, red and green for its label. The defendant also pleaded that the suit is liable to be dismissed on the ground of delay, laches and acquiescence in view of the use of the impugned mark by the defendant for more than 18 years.
4. Upon considering the pleadings of the parties, by order dated 26.09.2019, the following issues were framed:
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1.Whether the defendant's unregistered mark ''AROKIYA'' along with the style and colour scheme is deceptively similar to the plaintiff's registered trademark?
2. Whether different products in associated classes with identical name will cause confusion in the minds of an average customer?
3. Whether the suit for infringement of trademark ''AROKYA'' is maintainable against the defendant who is registered proprietor of the mark ''AROKIYA'' under Application No.1299314 in Class-30 in respect of instant idly dosai wet batter?
4. Whether this court has jurisdiction to entertain the suit for infringement of Trademark as principle place of business of the plaintiff and defendant are located outside the jurisdiction of this Court?
5. To what other reliefs are the parties entitled?
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5. From the contentions of the parties, it is evident that Issue No.2 should be recast to capture the rival contentions on the similarity or dissimilarity of goods, the claim under Section 29(4) and the consequent entitlement to relief, and an additional issue relating to laches and acquiescence should be framed. Accordingly, the recast Issue No.2 and additional issue are set out below:
Whether the goods of the plaintiff in relation to which the mark “Arokya” is applied are similar to the goods of the defendant in relation to which the mark “Arokiya” is applied and, if not, whether the plaintiff is entitled to relief in respect of alleged infringement?
Whether the plaintiff acquiesced in the use of the mark ''AROKIYA'' by the defendant or whether laches is attributable to the plaintiff and whether the plaintiff becomes disentitled to relief on either ground?
6. The plaintiff adduced evidence by examining Mr.P.Sivasakthivel, its authorised representative, as P.W.1. In course of the examination in chief of P.W.1, 42 documents were exhibited as Exs.P1 to P42. The defendant adduced evidence by examining Mr. S.Murugesan, its proprietor, as D.W.1. In course of the examination in chief of D.W.1, 13 _____________ https://www.mhc.tn.gov.in/judis Page No.8 of 48 C.S.No.34 of 2015 documents were exhibited as Exs.D1 to D13. Two documents were exhibited in course of the cross examination of D.W.1 by the plaintiff. These documents were marked as Exs.D14 and D15.
7. Oral arguments on behalf of the plaintiff were made by Mr.Surya Senthil, learned counsel, assisted by Mr.Prashant Alai, learned counsel for M/s.Surana and Surana; and by Mr.R.Sathishkumar, learned counsel, assisted by Mr.A.K.Rajaraman, learned counsel, for the defendant. Both parties also submitted written arguments.
8. The first contention of learned counsel for the plaintiff was that the plaintiff adopted and applied the mark ''AROKYA'' in relation to dairy products for a considerable period of time. By drawing reference to the Trademark certificate No.2791520 in Class 29, learned counsel pointed out that this registration was obtained several years after the plaintiff commenced use of the mark. Therefore, it was submitted that the mark had acquired distinctiveness by use in the pre-registration period. Learned counsel further submitted that the defendant initially used the mark ''AROKIYA'' written in Tamil along with the device of a rose(Ex.D1). Subsequently, the defendant modified the mark substantially by writing ''AROKIYA'' in English and removing the rose. According to learned _____________ https://www.mhc.tn.gov.in/judis Page No.9 of 48 C.S.No.34 of 2015 counsel, the changed mark is an unregistered mark. Since the unregistered mark used by the defendant in relation to its products is deceptively similar to the plaintiff's mark, the plaintiff is entitled to relief both in respect of infringement and passing off.
9. Learned counsel for the plaintiff next contended that the goods of the plaintiff and the defendant are similar. By way of substantiation, he pointed out the following common characteristics: the goods are food products used in the kitchen; they are perishable; and are stored in a refrigerator. Therefore, it was pointed out that a prospective consumer is likely to be deceived into thinking the defendant's product originates from the plaintiff. Without prejudice, he submitted that the plaintiff's mark satisfies the requirements of Section 29(4) of the Trade Marks Act and is entitled to protection in terms thereof even if the goods are construed as dissimilar. The fifth contention of learned counsel for the plaintiff was that the plaintiff's products have acquired high reputation and good will. In this regard, he referred to the annual turnover from the sale of products bearing the trademark ''AROKYA''. He also referred to the substantial promotional expenses incurred in this regard. Paragraphs 10 and 13 of the plaint were referred to in this connection and Ex.P13 was also relied upon. _____________ https://www.mhc.tn.gov.in/judis Page No.10 of 48 C.S.No.34 of 2015
10. With regard to the defendant's claim that the plaintiff acquiesced in the use of the mark ''AROKIYA'' by the defendant, learned counsel submitted that Section 33 of the Trade Marks Act is relevant only for purposes of registration of a mark and not otherwise. He further submitted that the defendant changed the mark substantially and that the plaintiff did not acquiesce in the use of the changed mark by the defendant.
11. In support of these contentions, learned counsel for the plaintiff relied upon two compilations of judgments. From and out of this, emphasis was placed on the following judgments:
(i) Corn Products Refining Co. v. Shangrila Food Products Ltd. (1960) 1 SCR 968 for the proposition that trade connection between goods is an important criterion to decide whether goods are similar.
(ii) Haw Par Brothers International Limited v. Tiger Balm Co. (P) Ltd. 1995 SCC OnLine Mad 189 (DB) for the proposition that if the mark used by a person is substantially different from the registered mark, it is an unregistered mark in the eye of law.
(iii) FDC Ltd. v. Docsuggest Healthcare Services (P) Ltd. (FDC Ltd.) (2017) 1 HCC (Del) 16 for the proposition that the following factors are relevant to determine similarity of goods: nature, intended purpose, _____________ https://www.mhc.tn.gov.in/judis Page No.11 of 48 C.S.No.34 of 2015 method of use, users, the trade channels through which the goods reach the market, location in the shops, etc.
12. These contentions were refuted by learned counsel for the defendant. The first contention of learned counsel for the defendant was that the plaintiff is not entitled to relief on the ground of acquiescence. By drawing reference to paragraph 25 of the plaint, learned counsel pointed out that the defendant admitted that it noticed the use of the mark ''AROKIYA'' by the defendant for its idly and dosa batter in July 2009. He also pointed out that the plaintiff referred to the defendant's reply of 04.08.2009 in response to the cease and desist notice. Thus, learned counsel contended that the plaintiff was fully aware about the defendant's use of the mark ''AROKIYA'' in relation to idly and dosa batter in July 2009. Upon receiving the cease and desist notice, the defendant issued the reply dated 04.08.2009, which was exhibited as Ex.P41. By this reply, he pointed out that the defendant stated that he is the registered proprietor of the trademark ''AROKIYA'' in Class 30 in respect of instant dosa and idly flour. He also pointed out that the plaintiff was informed that the goods manufactured and sold by the defendant are different from the ice cream and milk made by the plaintiff. After receiving this reply in August 2009, learned counsel pointed _____________ https://www.mhc.tn.gov.in/judis Page No.12 of 48 C.S.No.34 of 2015 out that the defendant did not initiate any further action until the suit was instituted in the year 2015. On this issue, the oral evidence was also referred to. In particular, learned counsel referred to Questions 10 to 16 and 17 to 20 and the answers thereto in the cross examination of P.W.1. By referring to question 16, learned counsel pointed out that P.W.1 was asked to explain whether there were any developments, as between the plaintiff and defendant, between 04.08.2009 and 05.01.2015 (when the suit was filed). In response, P.W.1 stated that nothing happened in between. He also pointed out that P.W.1 admitted that no communication had been filed by the plaintiff to substantiate the statement in paragraph 24 of the proof affidavit that the plaintiff had been persuading the defendant to desist from using the trademark ''AROKIYA''.
13. The next contention of learned counsel for the defendant was that the plaintiff did not plead in the plaint that the trademark was substantially changed. In fact, learned counsel submitted that such statement was not made even in the proof affidavit. Learned counsel also referred to the cross examination of D.W.1 at pages 111 to 130 of the typed set of pleadings and submitted, on that basis, that the defendant categorically stated that the goods are sold as per the label shown in Ex.D1 _____________ https://www.mhc.tn.gov.in/judis Page No.13 of 48 C.S.No.34 of 2015 except for the removal of the rose. In these circumstances, he submitted that acquiescence is proved beyond doubt and that Section 33(1)(b) of the Trade Marks Act applies. By virtue thereof, once acquiescence is established, if the mark had been used for a continuous period of five years after the proprietor of the earlier trademark became aware of such use, the proprietor of the earlier mark cannot object to the use of the later mark. Learned counsel for the defendant reiterated that the knowledge of the plaintiff is clear from the cease and desist notice dated 28.07.2009 and paragraph 25 of the plaint. More importantly, as a result of the reply dated 04.08.2019(Ex.P41), the plaintiff was put on notice that the defendant is asserting its right to use the mark as the registered proprietor thereof, albeit in relation to idly and dosa batter. In support of the plea of acquiescence, the judgment of the Supreme Court in Power Control Appliances v. Sumeet Machines Private Limited (Power Control Appliances) (1994) 2 SCC 448 was relied on.
14. The next contention of learned counsel for the defendant was that the goods are not similar. Learned counsel conceded that Section 29(2) of the Trade Marks Act applies with regard to goods which are not in the same class but its application is restricted to similar goods. He further _____________ https://www.mhc.tn.gov.in/judis Page No.14 of 48 C.S.No.34 of 2015 submitted that the Trade Marks Act does not contain a definition of similar goods. In order to determine whether goods are similar, he submitted that more than one test is applicable. A widely used test is whether the goods are capable of being substituted. By that standard, he submitted that milk or milk products like ghee or butter cannot be substituted for idly and dosa batter. The second test is whether the goods are derived from a common source. Once again, he submitted that idly and dosa batter and dairy products do not originate from a common source. By drawing reference to the cross examination of P.W.1 and, in particular, questions 23 and 24 and the answers thereto, he pointed out that P.W.1 admitted that the plaintiff manufactures and markets products under 7 or 8 trademarks such as Hatsun, Arokya, Arun, Ibaco, Oyalo Ready to Eat, Arun Unlimited, etc. By drawing reference to the cross examination of P.W.1 on 27.07.2020(page 90 of the typed set of pleadings), he pointed out that the ready to cook and ready to eat food products of the plaintiff are pizzas and samosas. Thus, he submitted that the products of the plaintiff and defendant are substantially different and that Section 29(2) is not attracted. In order to buttress the contention that relief should not be granted as regards dissimilar goods, he relied on the judgment of the Supreme Court in Vishnudas Trading Co. v. _____________ https://www.mhc.tn.gov.in/judis Page No.15 of 48 C.S.No.34 of 2015 Vazir Sultan Tobacco Co. AIR 1996 SC 2275 (Vazir Sultan) and M.S. Nandhini Deluxe v. Karnataka Cooperative Milk Producers Federation Ltd. (Nandhini Deluxe)(1997) 4 SCC 201.
15. Learned counsel denied the assertion that the plaintiff's trademark is a well known trademark in terms of Section 29(4) of the Trade Marks Act. On this issue, he submitted that the reputation of the plaintiff should be tested with reference to the first date of use by the defendant and not with reference to the plaintiff's reputation as on date. In support of this proposition, he relied on the judgment in Cadbury Schweppes Pty Ltd v. Pub Squash Co Pty Ltd. (Cadbury Schweppes)[1981] 1 ALL ER 213. Therefore, he stated that the reputation of the plaintiff should be tested as of 2001. With reference to Section 29(4), he also pointed out that the requirements under clauses (a) to (c) thereof are cumulative conditions. In this case, he stated that even the primary requirement under Section 29(4), namely, use by a person who is not a registered proprietor is not satisfied because the defendant is the registered proprietor of the mark “Arokiya”. By referring to the defendant's invoices from the year 2001(Ex.D9), he submitted that this establishes use by the defendant from the year 2001. With regard to the application by the defendant for registration of the mark _____________ https://www.mhc.tn.gov.in/judis Page No.16 of 48 C.S.No.34 of 2015 ''AROKIYA'' in relation to products such as chappathi, parota, etc., he stated that the said application was abandoned. Consequently, he stated that the said application is irrelevant for purposes of the present suit.
16. By way of rejoinder, learned counsel for the plaintiff submitted that the change in the defendant's trademark was adverted to in paragraph 27 of the plaint. Therefore, he submitted that it cannot be said that there was no pleading with regard to the changed mark. In fact, he contended that the suit was filed because the defendant substantially changed the mark after obtaining registration. Learned counsel for the plaintiff relied upon paragraphs 15 to 17 of the judgment of the Hon'ble Supreme Court in Bachhaj Nahar v. Nilima Mandal and another (2008) 17 SCC 491 (Bachhaj Nahar) to contend that an issue may be raised if indirectly touched upon in pleadings provided issues were framed in respect thereof and evidence was recorded in relation thereto. He also relied upon the judgment in Sardul Singh v. Pritam Singh and another (1999) 3 SCC 522 and, in particular, paragraph 12 thereof. By referring to the plaintiff's reply to the examination report of the trademark registry, he contended that the defendant had obtained registration by asserting that the label mark written in the Tamil script with a rose in the top left corner is distinctive. By _____________ https://www.mhc.tn.gov.in/judis Page No.17 of 48 C.S.No.34 of 2015 drawing reference to the judgment of the Delhi High Court in Hindustan Pencils Private Limited v. India Stationary Products Co. & another ILR (1989) 1 Delhi, he stated that the plaintiff was not guilty of inaction.
17. Similarly, by referring to Power Control Appliances, he submitted that delay and acquiescence are distinguishable. He also submitted that the Hon'ble Supreme Court held that acquiescence is to permit somebody to not only invade your rights but spend money on it. In this case, he stated that the defendant did not take any steps to promote its brand or build its reputation. In this connection, he referred to the cross examination of D.W.1 on 27.04.2021 (Page 120 of the typed set of pleadings) and pointed out that the defendant admitted that they do not sell their products in the city of Chennai, and that the products are sold only within the distance of 50 to 100 Kms. from the place of business. On the question of similarity of goods, learned counsel contended that the Nice classification under the Trade Marks Act is only for registration purposes. For this proposition, he referred to the judgment in FDC Ltd. On the similarity of goods, he submitted that both parties are engaged in the production of food products, which are perishable, and are stored in a refrigerator. The last contention was that the plaintiff is entitled to relief in _____________ https://www.mhc.tn.gov.in/judis Page No.18 of 48 C.S.No.34 of 2015 respect of passing off because the defendant did not disclose the changes made to the mark. He also pointed out that all the five requirements laid down by the Hon'ble Supreme Court in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd (2001) 5 SCC 73 are satisfied.
Issue No.4:
18. Based on the above contentions, I examine and determine the issues. Issue No.4 relates to whether this Court has jurisdiction to entertain the suit. Since this is a preliminary issue, this is addressed first. The plaintiff filed the suit before this court on the ground that it carries on business within the jurisdiction of this Court. The said assertion was made on the basis that the plaintiff has a branch office within the jurisdiction of this Court. Under Section 134 of the Trade Marks Act, a suit may be filed where the plaintiff carries on business. Although the Hon'ble Supreme Court concluded in Indian Performing Right Society Limited v. Sanjay Dalia (2015) 10 SCC 161 that Section 134 should not be abused by filing a suit in a place with which the plaintiff does not have a genuine connection, in this case, the plaintiff has a branch office at Anna Nagar in Chennai where business is carried on. Besides, that judgment also turned on the explanation to Section 20 of the Code of Civil Procedure 1908, which does _____________ https://www.mhc.tn.gov.in/judis Page No.19 of 48 C.S.No.34 of 2015 not apply to this Court. Therefore, the objection with regard to jurisdiction is overruled.
Additional Issue: Acquiescence and Laches
19. While the plaintiff contended that it had not acquiesced in the use of the mark ''AROKIYA'' by the defendant, the defendant contended that acquiescence was established both in terms of Section 33(1)(b) of the Trade Marks Act and the common law. In order to substantiate this contention, the defendant referred to and relied upon paragraph 25 of the plaint. Paragraph 25 of the plaint is set out below:
''25. The plaintiff further respectfully submits that during July 2009, the marketing section of the plaintiff came to know that the defendant has commenced using 'AROKIYA' as trade name and marketing Idly and Dosa batter under the trademark 'AROKIYA' in Tamil in a similar fashion written in red with white background in respect of Idly Dosa Batter. Immediately, the plaintiff sent a communication asking the defendant herein to desist from using the plaintiff's trademark. The defendant received the notice and by a letter dated 04.08.2009 trying to justify using of the trademark in respect of Idly Dosa Flour mix contending that they have not violated the _____________ https://www.mhc.tn.gov.in/judis Page No.20 of 48 C.S.No.34 of 2015 rights of the plaintiff and claiming that they are also a Registered Proprietor of their trademark in Class 30. However, the plaintiff has been persuading the defendant to desist from using the offending trademark through their marketing officials. But, the defendant continues to use the offending trademark and as a result all their efforts to persuade the Defendant from using the offending trademark failed. Hence the plaintiff is now filing this suit.''
20. Paragraph 25 of the plaint should be read along with the cease and desist notice and the reply thereto. The cease and desist notice (Ex.P40) was issued on 28.07.2009. By this notice, the plaintiff informed the defendant that it came to know that the defendant is trading under the name ''AROKIYA FOODS” and selling idly and dosai flour. The defendant was also put on notice that this amounts to a violation of the Trade Marks Act and that legal proceedings would be taken unless the defendant desisted from the conduct complained of. The reply to the notice (Ex.P41) was issued on 04.08.2009. Since the reply is of considerable significance, the reply is set out in entirety:
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21. From the above pleadings and evidence, it is clear that the defendant informed the plaintiff that they are manufacturing and marketing instant idly and dosai flour for the past eight years. The defendant also put the plaintiff on notice of the following: that it adopted the trademark ''AROKIYA'' in relation to the products in the year 2001; that the defendant is the registered proprietor of the trademark ''AROKIYA'' in Class 30 and such registration is in force; and that the defendant uses the mark only in relation to instant idly/dosa flour mix and that these products are different from the plaintiff's products such as ice creams and milk. After stating the above, the defendant asserted that it had not violated any rules and that the threat of legal action is baseless. The plaintiff admits receipt of this reply and, in fact, exhibited this reply as Ex.P41 through P.W.1. In light of this reply, the plaintiff should have initiated legal proceedings within a reasonable time of such reply. Instead, the present suit was presented on 05.01.2015. Undoubtedly, more than five years elapsed between the date of receipt of Ex.P41 and the date of presentation of the plaint.
22. In this regard, the defendant relied upon Section 33 of the Trade Marks Act. Section 33 is set out below:
_____________ https://www.mhc.tn.gov.in/judis Page No.23 of 48 C.S.No.34 of 2015 ''33. Effect of acquiescence.— (1)Where the proprietor of an earlier trade mark has acquiesced for a continuous period of five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled on the basis of that earlier trade mark—
(a)to apply for a declaration that the registration of the later trade mark is invalid, or
(b)to oppose the use of the later trade mark in relation to the goods or services in relation to which it has been so used, unless the registration of the later trade mark was not applied in good faith.
(2)Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right, notwithstanding that the earlier trade mark may no longer be invoked against his later trade mark.'' Although learned counsel for the plaintiff contended that Section 33 is relevant only in respect of proceedings before the registry, the text of Section 33, particularly clause (b) of sub-section (1), belies this contention.
As per clause (b), in spite of knowledge of use of a registered trade mark, if there is acquiescence by the proprietor of the earlier mark for a continuous period of five years, the use of the later trade mark cannot be objected to _____________ https://www.mhc.tn.gov.in/judis Page No.24 of 48 C.S.No.34 of 2015 thereafter. Hence, the contention that Section 33 is not relevant in this context is untenable.
23. As discussed above, paragraph 25 of the plaint, read with Exs.P40 and P41, establishes conclusively that the plaintiff became aware of the defendant's use of the mark ''AROKIYA'' in July 2009. When the defendant was put on notice that the use constitutes violation of the Trade Marks Act, the defendant replied in August 2009 and informed the plaintiff that the mark is being used in relation to idly and dosa batter from 2001 and that the defendant had registered the trademark in Class 30. The suit was filed more than five years after receipt of this reply and P.W.1 admitted in course of cross-examination that the plaintiff did not do anything in this regard in the interregnum. In Power Control Appliances, the Hon'ble Supreme Court dealt extensively with acquiescence in the context of trademark law. Paragraph 26 thereof is set out below:
''26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights _____________ https://www.mhc.tn.gov.in/judis Page No.25 of 48 C.S.No.34 of 2015 in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White Sr. John Romilly said: ''It is important to distinguish mere negligence and acquiescence''. Therefore, acquiescence is one facet of delay.
If the plaintiff stood by knowingly and let the defendants build up an important trade until had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G) & Co. v. Boehm. The Acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill.'' _____________ https://www.mhc.tn.gov.in/judis Page No.26 of 48 C.S.No.34 of 2015
24. The evidence on record indicates conclusively that the plaintiff was fully aware of the use of the mark ''AROKIYA'' in relation to idly dosa batter. In spite of being aware of such use, the plaintiff did not take action to restrain such use after receiving the reply notice in August 2009. Thus, the plaintiff clearly sat by while its rights were allegedly invaded. Learned counsel for the plaintiff contended that such inaction while its rights are invaded is per se insufficient and that the defendant should have spent money in building its reputation and goodwill to rely on acquiescence. The defendant adduced evidence of use of the mark from the year 2001 by filing invoices, which were collectively exhibited as Ex.D9. The defendant also produced advertisements as Exs.D10, D11 and D12. Although the defendant did not adduce evidence of substantial turnover or promotional expenditure, in my view, such evidence is not necessary for purposes of establishing acquiescence. Indeed, this is a text book case of acquiescence. In view of the conclusion on acquiescence, it is unnecessary to consider if the plaintiff is guilty of laches or to examine the implications thereof. The additional issue is therefore decided in favour of the defendant and against the plaintiff.
_____________ https://www.mhc.tn.gov.in/judis Page No.27 of 48 C.S.No.34 of 2015 Recast Issue No.2:
25. Recast Issue No.2 pertains to whether the goods are similar and, if not, whether the plaintiff is entitled to the reliefs claimed. At the outset, it should be noticed that Section 29(2) of the Trade Marks Act cannot be applied against the registered proprietor of a trade mark. Therefore, for purposes of this issue, I proceed on the assumption that the defendant's mark is unregistered although the factual position is that the goods of the plaintiff are registered in Class 29 and those of the defendant in Class 30. The legal position is that Section 29(2) of the Trade Marks Act would apply notwithstanding the fact that the goods fall under different classes provided the goods are considered similar. Since the goods are admittedly not identical, clause (b) of Section 29 is relevant and, arguably, clause (a) and the same are set out below:
''(2) 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 because of -
(a)its identity with the registered trade mark and the similarity of the goods or services covered by the registered trade mark;or _____________ https://www.mhc.tn.gov.in/judis Page No.28 of 48 C.S.No.34 of 2015
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark ;
is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.” Therefore, the question that arises for consideration is whether the dairy products of the plaintiff are similar to the idly and dosa batter of the defendant and whether such similarity is likely to cause confusion or be associated with the registered trade mark. Because the Trade Marks Act does not define the expression ''similarity of the goods or services'', the standards and tests prescribed by courts to determine similarity of goods or services should be referred to. While learned counsel for the plaintiff relied on the tests prescribed in FDC Ltd., learned counsel for the defendant submitted that one of the tests is whether the goods may be substituted for one another. With reference to the products in question, he submitted that milk, ghee, curd, etc., which are the plaintiff's products, are all dairy products which originate from the cow and cannot be substituted by the plaintiff's products. He also submitted that the defendant's products have a completely different origin. In response and to the contrary, learned counsel _____________ https://www.mhc.tn.gov.in/judis Page No.29 of 48 C.S.No.34 of 2015 for the plaintiff submitted that both the products of the plaintiff and defendant are food products that are used in the kitchen, and being perishable are stored in a refrigerator. In order to test similarity, it was contended that the matter should be examined from the perspective of a potential or actual consumer. If such consumer walks into a shop selling the two products and looks into the refrigerator, learned counsel for the plaintiff contended that it is likely that the consumer would find both products therein and be confused with regard to the origin thereof.
26. The paramount consideration under trademark law is whether a mark is used or proposed to be used in relation to particular goods or services as a source identifier. Even without registration, rights are created by use but registration confers the statutory right to exclusive use coupled with the right to sue for infringement of the registered mark. An applicant is not entitled to registration unless such applicant establishes use or declares that the applicant proposes to use the mark in relation to specific goods. Trade Mark law also permits registration under multiple classes by filing separate or multi-class applications. Given the object and purpose, protection is restricted to the goods or services in relation to which the mark _____________ https://www.mhc.tn.gov.in/judis Page No.30 of 48 C.S.No.34 of 2015 is either used or proposed to be used and goods or services similar thereto. Indeed, in Vazir Sultan, the Supreme Court upheld the decision of the Trade Marks Registry in rectifying the register by restricting protection to cigarettes because the mark was used by the proprietor only in relation to cigarettes. The use of the expression “similarity in goods or services” under Section 29(2) should be viewed from the above perspective.
27. When so viewed, it certainly cannot be concluded that all products used in the kitchen are similar. If so, the registered proprietor of a trademark in relation to milk and dairy products would be in a position to claim relief if an identical or deceptively similar mark is used by a manufacturer of hobs or chimneys or refrigerators. Likewise, it cannot be extended to all food products because the expression food products is wide ranging and covers fruits, vegetables, cereals, meat and fish products, sweets, savouries, beverages, biscuits, dairy products, etc. Thus, all food products certainly cannot be considered similar for purposes of Section 29(2). In order to determine whether products or services are similar for purposes of Section 29(2), multiple factors may have to be taken into consideration. In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d _____________ https://www.mhc.tn.gov.in/judis Page No.31 of 48 C.S.No.34 of 2015 492 (2nd Cir.1961), the US Court of Appeals for the Second Circuit formulated the following criteria: the strength of the prior mark; the degree of similarity between the two marks; the proximity of the products; the likelihood that the prior owner will bridge the gap; actual confusion; the defendant's good faith in adopting its own mark; the quality of the defendant's product; and the sophistication of the buyers. In my view, while some of the above criteria such as the strength of the prior mark or the degree of similarity between the two marks or the defendant's good faith in adopting its mark have a bearing either on the likelihood of confusion or the defendant's intentions and, therefore, impact the grant or refusal of discretionary relief, they are not criteria for determining whether products or services are similar. In British Sugar Plc. v. James Robertson & Sons Ltd. 1996 RPC 281, the following factors were held to be material in this regard:
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach the market;
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(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be found in supermarkets and in particular whether they are or are likely to be found on the same or different shelves;
(f) The extent to which the respective goods or services are competitive. This inquiry may take into account how those on trade classify goods, for instance whether market research companies, who of course act for industry, put the goods or services in the same or different sectors.
28. While it may not be prudent to attempt an exhaustive catalogue, in my view, the following are some of the important criteria to determine whether goods or services are similar: the nature of the goods/services; the origin of the goods; the purposes for which the goods/services are used; whether the goods/services are in competition and/or can be used as substitutes for one another; whether the goods/services are complementary and, if so, in what manner and to what extent; the trade connection; and the trade channels. Others factors such as the strength of the prior mark, the degree of identity or similarity of the _____________ https://www.mhc.tn.gov.in/judis Page No.33 of 48 C.S.No.34 of 2015 marks, the segment or class of consumers or potential consumers; retail environment, circumstances in which the later mark was adopted, etc. would have a bearing on likelihood of confusion, if the goods or services are similar, and on the grant of discretionary relief. It would be evident when these criteria are tested in concrete contexts that they are not cumulative. As between the criteria, it is also not advisable to establish a cast-in-iron hierarchy but criteria such as the nature, intended purpose and the competing or complementary nature of the products/services are more central to a determination of similarity; whereas, other factors like retail environment or addressable market become crucial while considering likelihood of confusion. Hence, after taking into consideration some or all of the above criteria in the specific factual context, the determination should be made largely objectively although subjectivity cannot be eliminated. While undertaking this exercise, as held In re Australian Wine Importers, it should be borne in mind that the classification is not determinative and that goods or services in the same class under the Nice Classification may be held to be dissimilar, whereas goods or services in different classes may be held to be similar.
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29. Before applying the above criteria to the facts of this case, testing the criteria for similarity on pairs of goods or services may throw light on this issue. By way of caveat, it should be recognised that a full-scale examination of all relevant criteria can only be undertaken in a concrete factual context and this analysis, which is divorced from concrete context, may only serve as guidance. For test case 1, I draw from the pool of beverages by assuming that there is a prior mark in relation to coffee and an identical or deceptively similar subsequent mark used by a producer of tea. Would these products be considered similar? Both the products would qualify as beverages that fulfil the same or substantially the same purpose. Taste permitting, they can be used as substitutes. Both are commonly though not necessarily mixed in milk. They are likely to be sold in the same retail environment. On an overall basis, it is probable that they would be construed as similar goods. For test case 2, I turn to the automobile industry by assuming a prior mark used in relation to a motor car and a deceptively similar later mark used on a motorcycle. Both products are used as personal modes of transport. They may, albeit not in all circumstances, be used as substitutes. They are sold through similar trade channels but the class of customers is typically different. This pair of goods is also likely to be _____________ https://www.mhc.tn.gov.in/judis Page No.35 of 48 C.S.No.34 of 2015 construed as similar but factors such as the strength of the prior mark and evidence on whether the proprietor of the senior mark intends to enter the motorcycle market may tilt the balance. Moving back to the kitchen but not to food products for test case 3: a prior mark applied to a hob and a subsequent deceptively similar mark applied to a chimney. They fulfil different immediate purposes and therefore certainly cannot be used as substitutes. However, they are complementary and are typically sold in the same retail environment. In spite of serving different purposes and not being capable of being used as substitutes, they are likely to be construed as similar because the chimney is important for the use of the hob and therefore there is a close and direct connection. Staying with appliances for test case 4, washing machines and dryers would probably be judged as similar since they are similarly complementary but not washing machines and refrigerators (test case 5).
30. Turning to services for test case 6, both banks and non- banking financial services companies borrow and provide credit facilities. They are, therefore, often, though not always, capable of being substituted and fulfil broadly the same purpose. Although insurance companies (test _____________ https://www.mhc.tn.gov.in/judis Page No.36 of 48 C.S.No.34 of 2015 case 7) are in the financial services space, they may not qualify as similar because they do not serve the same purpose, cannot be substituted and are not sufficiently complementary. However, given that service marks typically tie-in with the corporate/trade name, the later mark may not pass muster with regulators such as the Registrar of Companies or the Insurance Regulatory and Development Authority of India. Even otherwise, it should be recognised that the strength of the prior mark, the circumstances in which the later mark was adopted and the like could impact the determination. Drawing on another example from services, restaurants and food delivery services (test case 8) are likely to meet the criteria for similarity. Circling back to food products for test case 9, if the prior mark is applied to rice and the deceptively similar subsequent mark to wheat, would they be considered similar? In my view, yes. They are cereals; taste and preference permitting, they may be used as substitutes; and trace their origin from plants. For test case 10, I stay with food products and assume a prior mark for biscuits and a subsequent mark for chicken. The first product is ready-to-eat while the latter is not. The former is eaten as a snack and the latter as part of a meal. They are not substitutes or complementary products and may not be considered similar.
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31. From the above analysis, the conclusions I draw are that products/services that are used for substantially the same purpose and are, therefore, capable of being used as substitutes are likely to be construed as similar (tea and coffee; rice and wheat). Likewise, products/services that are complementary and help achieve a larger common purpose are also likely to be construed as similar (washing machine and dryer; hob and chimney) provided the complementarity is such that the use of one product is necessary or important for the use of the other, such as in the two sets of products in parenthesis. For this proposition, I draw inspiration from the judgment of the General Court of the Court of Justice of the European Union in IQ Group Holdings Bhd. v. European Union Intellectual Property Office, Judgment dated 19.03.2019. Unless direct complementarity is made the yardstick, all products used in the kitchen or all food products could be construed as complementary because it could be contended with a measure of justification that all such products provide for and enhance the food consumption or dietary experience. Hence, broad commonalities such as use as food products or use in the kitchen will not suffice. Against this backdrop, the similarity or dissimilarity of the goods in question in this case is examined next.
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32. The plaintiff's product, namely, milk and dairy products originate from the cow, whereas the defendant's products originate from plant sources. These products clearly cannot be used as substitutes for one another. The object and purpose for which milk and dairy products are used is completely different from the object and purpose for which idly/ dosa batter is used. Without doubt, they are both food products and are perishable. Therefore, they are typically stored in a refrigerator. However, those similarities are insufficient for the said products to be construed as similar products for purposes of Section 29(2) of the Trade Marks Act. The manner of adoption of the later mark and the fact that “AROGYA” and its variants mean health and well-being add muscle to this conclusion. This leads to the consequential question whether the plaintiff's mark is entitled to protection under Section 29(4) of the Trade Marks Act.
33. As contended by learned counsel for the defendant, neither Section 29(2) nor (4) can be used against the registered proprietor of an impugned mark. Even if we proceed on the assumption that the defendant should be treated as the proprietor of an unregistered mark because of unilateral alteration, the requirements of clauses (a) to (c) of sub-section 29(4) should be cumulatively satisfied on account of use of the conjunction _____________ https://www.mhc.tn.gov.in/judis Page No.39 of 48 C.S.No.34 of 2015 “and” between the clauses. By taking note of the conclusion on Issue No.2 and the phonetic and visual similarity of the marks, clauses (a) and (b) are satisfied. Turning to clause (c), the defendant asserted and adduced evidence of use from 2001 and by relying on Cadbury Schweppes contended that the plaintiff's reputation should be tested as of 2001. I concur with the contention that the reputation of the plaintiff's mark should be tested as of 2001. If so tested, the evidence on record does not prove reputation for purposes of Section 29(4). More importantly, it certainly cannot be inferred that the use of the mark ''AROKIYA'' by the defendant in relation to idly and dosa batter from the year 2001 is without due cause or takes unfair advantage of the distinctive character and reputation of the plaintiff's mark. For all these reasons, the plaintiff's claim to protection under Section 29(4) of the Trade Marks Act cannot be accepted. Therefore, recast Issue No.2 is also decided in favour of the defendant and against the plaintiff. In light of the findings on re-cast Issue No. 2, which was recorded after assuming that the defendant's mark is unregistered, and the additional issue on acquiescence, it has become immaterial and unnecessary to examine in detail the implications of the defendant's unilateral alteration of their registered mark.
_____________ https://www.mhc.tn.gov.in/judis Page No.40 of 48 C.S.No.34 of 2015 Issue Nos.1 and 3
34. Issue No.3 pertains to the maintainability of the suit as regards the relief of infringement, and is dealt with first before dealing with Issue No.1. As stated earlier, the re-cast Issue No.2 was decided by assuming that the defendant's mark ''AROKIYA'' is unregistered and, on such assumption, a conclusion was reached that the products in relation to which the two marks are applied are not similar. Section 59 of the Trade Marks Act enables the registered proprietor of a trade mark to apply to the Registrar for permission to alter the trade mark in any manner not substantially affecting the identity thereof. In this case, the defendant admittedly did not apply for permission under Section 59. The statute does not, however, prohibit the use of an unregistered mark or the use of an unilaterally altered registered mark. The defendant admitted the alteration of the registered trade mark (Ex.D1) to the extent of removing the pictorial device of the rose but contended that the change is not substantial. The defendant also contended that the plaintiff did not plead substantial change and this contention was responded to by relying on Bachhaj Nahar for the proposition that if an issue was framed and evidence adduced, the matter may be raised. In light of the findings on other issues, it is unnecessary to _____________ https://www.mhc.tn.gov.in/judis Page No.41 of 48 C.S.No.34 of 2015 grapple with these nuances. Even if the suit for infringement were to be held to be maintainable because the alteration of the mark was unilateral, such conclusion becomes immaterial in view of the findings on acquiescence and on re-cast Issue No.2. As regards Issue No.1, the defendant's mark ''AROKIYA'' is undoubtedly phonetically and visually similar to the plaintiff's mark ''AROKYA''. However, once again, in view of the conclusion on acquiescence and dissimilarity of the goods, the conclusion on the similarity of the marks is largely academic. Issue Nos.1 and 3 are disposed of in the above terms.
Issue No.5
35. Issue No.5 pertains to other reliefs. Although the findings on acquiescence have a bearing on passing off also, it is necessary to briefly discuss passing off because Section 29 only pertains to infringement. The defendant's use of the mark is from the year 2001 and the registration is in force from the year 2004. The plaintiff became aware of the defendant's use of the mark, including the circumstances thereof, in the year 2009 and did not institute legal proceedings until January 2015. The defendant's use is restricted to idly and dosa batter and these products are not made by the _____________ https://www.mhc.tn.gov.in/judis Page No.42 of 48 C.S.No.34 of 2015 plaintiff. Indeed, the evidence on record shows that the plaintiff uses different trade marks for its products, and even dairy products such as paneer and ice creams are sold under the brands “HATSUN” and “ARUN” or “IBACO”, respectively. As stated earlier, the word “AROGYA” and its variants mean “health” or “well being” in many Indian languages, and neither deceit not misrepresentation may be attributed to the defendant in its adoption of the mark “AROKIYA” for idly dosa batter. Therefore, no case is made out to accept the allegation of passing off. Hence, primarily on the ground of acquiescence and secondarily on the ground that the goods are dissimilar, the plaintiff is not entitled to succeed. Since costs follow the event, the defendant is entitled to costs towards reasonable lawyer's fees and other expenses.
36. In the result, C.S.(Comm.Div.)No.34 of 2015 is dismissed. Based on the loser pays principle, the plaintiff shall pay costs of Rs.2,00,000/- to the defendant towards lawyer's fees and other expenses.
11.08.2022 Index : Yes Internet : Yes rrg _____________ https://www.mhc.tn.gov.in/judis Page No.43 of 48 C.S.No.34 of 2015 Plaintiff's witness:
Mr.P.Sivasakthivel : P.W.1
Defendant's witness:
Mr.S.Murugesan : D.W.1
Documents exhibited by the Plaintiff:
Sl.No Exhibits Date Particulars of Documents
1. Ex.P1 18.10.2016 Board Resolution authorizing Mr. P.Sivasakthivel
(Photocopy)
2. Ex.P2 05.08.2011 Authorization letter from plaintiff company to represent
the plaintiff in the suit.(Photocopy)
3. Ex.P3 04.03.1986 Incorporation Certificate of the company (Photocopy)
4. Ex.P4 2005 Quality Certificate ISO 22000(Photocopy)
5. Ex.P5 2008 Certificate of Quality ISO 9001(Photocopy)
6. Ex.P6 2005 Certificate of Food Safety Management ISO 220
(Photocopy)
7. Ex.P7 2004 Certificate of Environmental Management Standard
ISO 14001 (Photocopy)
8. Ex.P8 2005 Foods Safety Systems Certificate 22000;2005
(Photocopy)
9. Ex.P9 2008 Certificate of Quality Management System ISO
9001:2008 (Photocopy)
10. Ex.P10 - Certificate by BIS (Photocopy)
11. Ex.P11 11.04.2012 Certificate by Food Safety and Standard Authority of India(Photocopy)
12. Ex.P12 - Copy of the Pouch
13. Ex.P13 26.02.2014 Chartered Accountant's Certificate for sale turnover and advertisement Expenses. (Photocopy)
14. Ex.P14 - List of Distribution channels of the plaintiff's product ''AROKYA'' (Photocopy)
15. Ex.P15 - Advertisement in various Medias(Photocopy) _____________ https://www.mhc.tn.gov.in/judis Page No.44 of 48 C.S.No.34 of 2015 Sl.No Exhibits Date Particulars of Documents
16. Ex.P16 14.06.1995 Extract of E-Register for the trademark ''AROKYA FRESH CREAMY MILK'' under Class 29 in Trademark Application No.669001 (Photocopy).
17. Ex.P17 13.02.2006 Certificate of Registration of the Trademark ''AROKYA'' in Class 29 under No.1421082 (Photocopy)
18. Ex.P18 13.02.2006 Certificate of Registration of the Trade Mark ''AROKYA'' Logo in Class 29 under No.1421080 (Photocopy)
19. Ex.P18 13.02.2006 Certificate of Registration of the Trade Mark ''AROKYA'' Logo in Class 29 under No.1421081 (Photocopy)
20. Ex.P20 25.11.2005 Certificate of Registration of the Trade Mark ''AROKYA'' Logo in Class 32 under No.1402211 (Photocopy)
21. Ex.P21 25.11.2005 Extract of E-Register for the trademark ''AROKYA (IN TAMIL)'' under Class 29 of Trade Mark in Application No.1402212 (Photocopy)
22. Ex.P22 25.11.2005 Certificate of Registration of the Trade Mark ''AROKYA'' Logo in Class 29 under No.1402205 (Photocopy)
23. Ex.P23 25.11.2005 Certificate of Registration of the Trade Mark ''AROKYA'' Logo in Class 32 under No.1402206 (Photocopy)
24. Ex.P24 14.08.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2791526(Photocopy)
25. Ex.P25 14.08.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2791527(Photocopy)
26. Ex.P26 14.08.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2791528(Photocopy)
27. Ex.P27 14.08.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2791529(Photocopy) _____________ https://www.mhc.tn.gov.in/judis Page No.45 of 48 C.S.No.34 of 2015 Sl.No Exhibits Date Particulars of Documents
28. Ex.P28 01.08.2013 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2574529(Photocopy)
29. Ex.P29 31.01.2013 Extract of E-Register for the trademark ''AROKYA'' registered under Class 29 in Trademark Application No.2469516
30. Ex.P30 29.12.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 29 in Trademark Application No.2871351(Photocopy)
31. Ex.P31 28.01.2013 Registration Certificate for the Trademark ''AROKYA'' under Class 30 in Trademark Application No.2467714(Photocopy)
32. Ex.P32 01.08.2013 Extract of E-Register for trademark ''AROKYA'' under Class 30 in Trademark Application No.2574530(Photocopy)
33. Ex.P33 29.12.2014 Extract of E-Register for trademark ''AROKYA'' under Class 30 in Trademark Application No.2871352(Photocopy)
34. Ex.P34 28.01.2013 Registration Certificate for the Trademark ''AROKYA'' under Class 31 in Trademark Application No.2467715(Photocopy)
35. Ex.P35 01.08.2003 Registration Certificate for the Trademark ''AROKYA'' under Class 31 in Trademark Application No.2574531(Photocopy)
36. Ex.P36 29.12.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 31 in Trademark Application No.2871353(Photocopy)
37. Ex.P37 28.01.2013 Extract of E-Register for trademark ''AROKYA'' under Class 32 in Trademark Application No.2457716(Photocopy)
38. Ex.P38 01.08.2013 Registration Certificate for the Trademark ''AROKYA'' under Class 32 in Trademark Application No.2574532(Photocopy)
39. Ex.P39 29.12.2014 Registration Certificate for the Trademark ''AROKYA'' under Class 33 in Trademark Application No.2871354(Photocopy) _____________ https://www.mhc.tn.gov.in/judis Page No.46 of 48 C.S.No.34 of 2015 Sl.No Exhibits Date Particulars of Documents
40. Ex.P40 28.07.2009 Notice to the defendant
41. Ex.P41 04.08.2009 Reply Notice to plaintiff
42. Ex.P42 - Infringing copy of the Pouch A and B Documents exhibited by the Defendant:
Sl.No. Exhibits Date Particulars of Documents
1. Ex.D1 23.09.2005 Photocopy Registration certificate of the defendant's
mark.
2. Ex.D2 14.11.2011 Photocopy of defendant's registration
3. Ex.D3 02.01.2007 Photocopy of defendant's registration with the
Department of Commercial Taxes Department.
4. Ex.D4 19.03.2015 Photocopy of License issued by Tamil Nadu Food
Safety and Drug Administration Department.
5. Ex.D5 01.05.2014 Photocopy of certificate for ISO:9001:2008 standards
in favour of the defendant.
6. Ex.D6 20.03.2015 Photocopy of Chartered Accountant Certificate
7. Ex.D7 11.03.2015 Photocopy of Municipal Tax Receipt
8. Ex.D8 28.07.2009 Copy of Cease and Desist notice
9. Ex.D9 - Photocopy of invoice raised by the defendant carrying
the reference of the brand name ''AROKIYA''.
10. Ex.D10 - Photocopy of advertisement of defendant's products
11. Ex.D11 - Photocopy of advertisement in defendant's delivery
trucks/vans.
12. Ex.D12 - Photocopy of Pamphlets of defendant
13. Ex.D13 - Photocopy of packing cover used by the defendant
14. Ex.D14 - Photocopies of the web extract
15. Ex.D15 Photocopies of the web extract
SKRJ
SENTHILKUMAR RAMAMOORTHY, J.
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https://www.mhc.tn.gov.in/judis
Page No.47 of 48
C.S.No.34 of 2015
rrg
Pre-Delivery Judgment
Civil Suit No.34 of 2015
11.08.2022
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https://www.mhc.tn.gov.in/judis
Page No.48 of 48