Madras High Court
Jay Engineering Works Ltd vs / on 10 November, 2021
Author: N.Anand Venkatesh
Bench: N.Anand Venkatesh
C.S.No.313 of 2007
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 10.11.2021
Coram:
THE HONOURABLE MR. JUSTICE N.ANAND VENKATESH
C.S.No.313 of 2007
1. Jay Engineering Works Ltd.,
23, Kasturba Gandhi Marg,
New Delhi – 110 001.
Represented by its Constituted Attorney,
Mr.Naresh Arora.
2. Usha International Ltd.,
Surya Kiran Building,
19, Kasturba Gandhi Marg,
New Delhi – 110 001
Represented by its Constituted Attorney &
General Manager Legal
Mr.Naresh Arora .. Plaintiffs
/versus/
1. Mr.Nelson
Proprietor,
Venus Industries,
Old No.29, New No.20,
Dr.Ambedkar Street,
Villivakkam, Near Bus stand,
Chennai 600 049.
2. Mr.Naveen,
National Electricals,
New No.160, Old No.95,
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C.S.No.313 of 2007
Perambur Barracks Road,
Near Doveton,
Chennai 600 007.
3. Mr.Mahesh
Priyanka Electricals
No.104, Govindappa Naicken Street,
III Floor, Parrys,
Chennai 600 001.
4. Maharaja Departmental Stores
No.121, Govindappa Naicken Street,
Parrys, Chennai 600 001. .. Defendants
Prayer:- Civil Suit has been filed under Order IV, Rule 1 of O.S. Rules, read
with Order VII Rule 1 of the Code of Civil Procedure read with Sections 27, 134
and 135 of the Trademarks Act 1999 and Sections 55 & 62 of the Copy Right Act,
1957, praying to pass judgment and decree against the defendants.
(a)To grant a permanent injunction, restraining the Defendants, by itself, its
servants, agents, distributors, or anyone claiming through them from
manufacturing, selling, advertising and offering for sale using the Trade Mark
USHA upon the goods or in any media and use the same in invoices, letter heads
and visiting cards or by using any other trade mark which is in any way visually,
phonetically or deceptively similar to the plaintiffs Registered Trade Mark USHA
or in any manner infringing the Plaintiffs Registered Trade Mark Nos.128504 &
195537.
(b)To grant a permanent injunction, restraining the defendants, by itself, its
servants, agents, distributors, or anyone claiming through them from reproducing,
selling, advertising and offering for sale using the Copy right USHA upon the
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goods or in any media and use the same in invoices, letter heads and visiting cards
or by using any other copy right which is in any way visually, phonetically or
deceptively similar to the plaintiffs registered copy right USHA or in any manner
infringing the plaintiffs Registered Copyright Nos.25186/79 and 5348/70.
(c)To grant a permanent injunction, restraining the defendants by themselves, their
servants, agents, men or anyone claiming through them from manufacturing,
marketing, distributing, offering or advertising for sale electric fans of all kinds
using the mark USHA/color scheme and get up of the cartons of the KSD,
PULSAR, SONATA and ACCURA fans or similar sounding names / color scheme
and get up in the course of their business and pass of their electric fans of all kinds
using the Trade mark USHA/Color scheme and get up of the cartons of the KSD,
PULSAR, SONATA and ACCURA fans as and for the goods of the plaintiff goods
or enable others to pass off.
(d)To direct the defendants to surrendar to the plaintiffs all the electric fans,
packing material, cartons, advertisement materials and hoardings, letter heads,
visiting cards, office stationery and all other materials containing/ bearing the
Trade Mark USHA or other deceptively similar Trade Mark USHA or other
deceptively similar Trade Mark in respect of electric fans
(e) for a preliminary decree in favour of the Plaintiffs, directing the defendants to
render an account of profits made by them by the use of the Trade Mark USHA on
the goods referred and for a final decree in favour of the plaintiffs for the amount
of the profits found to have been made by the defendants, after the defendants have
rendered accounts.
(f)To direct the defendants to pay to the Plaintiffs the costs to the suit.
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For Plaintiffs :Mr.C.Daniel and Gladys Daniel
For Defendants :Mr.P.C.M.Raghupathy for D1
Mr.Ashok Kumar J Daga for D4
M/s.S.G.Ramesh Kumar Chopda
for D2
D1, D2 and D4 set exparte
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JUDGMENT
(This case has been heard through Video Conferencing) The registered trade mark holder has filed the present suit against the Defendants complaining infringement of trademark and copyright and has sought for the relief of permanent injunction restraining the Defendants from manufacturing, marketing, distributing, offering or advertising the sale of electric fans of all kinds by using the mark “USHA” and its colour scheme, and has further prayed for a direction to the Defendants to surrender all the materials bearing the trade mark of the Plaintiff. The Plaintiff has also sought for a direction to the Defendants for rendition of accounts.
2. The case of the Plaintiffs is that they have been carrying on the business of manufacture and sale of a wide range of consumer durable products including electric fans, sewing machines, diesel engines, etc. It is claimed that they 4/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 have conceived and adopted the trade mark “USHA” with respect to all the goods manufactured by them right from the year 1936 onwards. It is further claimed that they adopted a unique style of writing with respect to the trademark “USHA”.
3. The further case of the Plaintiffs is that they are the owners of the registered trademark “USHA” with respect to electric fans since the year 1947.
4. It is further claimed by the Plaintiffs that by virtue of long usage of the distinctive trademark, it has become a household name and they have earned a lot of goodwill and reputation in the market. To substantiate this claim, the year wise turnover has been elaborately stated in the plaint.
5. The grievance of the Plaintiffs is that the Defendants started using the trademark “USHA” with respect to electric fans and while doing so, they adopted every feature of the Plaintiff’s colour scheme and getup, and thereby, the Defendants are riding upon the Plaintiff’s goodwill and reputation misleading the general public. Aggrieved by the same, the present suit has been filed seeking various reliefs.
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6. All the Defendants were served. Defendants 1, 2 and 4 were called absent and set ex parte by an order dated 09.09.2021. Thereafter, the 3rd Defendant who was served notice through substituted service was also called absent and set ex parte by an order dated 10.11.2021.
7. This Court took into consideration the nature of claim made by the Plaintiffs and the materials that were relied upon to substantiate the same and came to a conclusion that there is no requirement for any oral evidence in this case.
Hence, a direction was issued to the learned Additional Master III to mark the documents and accordingly, Exhibit P1 to P53 were marked and sent back to this Court.
8. Heard Ms.Gladys Daniel, learned counsel for the Plaintiff and carefully perused the documents relied upon by the Plaintiff.
9. The only issue before this Court is whether the Defendants were invovled in blatant infringement of trademark of the Plaintiffs and whether they attempted to misuse the reputation and goodwill earned by the Plaintiffs to unjustly 6/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 enrich themselves.
10. On carefully going through Exhibit P1 to P3, it can be seen that the Plaintiff is a registered trademark owner of the mark “USHA”. This mark has a distinct identity. It is also seen that this mark has been in usage right from the year 1936 onwards. It is also seen that the Plaintiffs are using this trademark/logo for electric fans from the year 1947 for which Trademark No. 128504 was assigned.
Copious documents are available to establish the turnover of the Plaintiffs under this registered trademark. Exhibit P5 to P47 which are the bills showing the sales for various years, speak for itself on the turnover achieved by the Plaintiffs. The mark “USHA” has become a household name more particularly for electric fans.
The Defendants who were aware about the same decided to make use of this mark for selling electric fans. The defendants are obviously attempting to pass off their good by adopting each and every essential feature of the Plaintiff’s trademark, artistic design, colour scheme and getup.
11. It must be borne in mind that the consumer who purchases electric fans will be in the category of a man of average intelligence and imperfect recollection.
To such a man, there is absolutely no chance of drawing a distinction between the 7/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Plaintiff’s product and the Defendant’s product. This is not a case of deceptive similarity but one of exact reproduction of the registered trademark of the Plaintiffs. The Defendants are deliberately using the trademark “USHA” to mislead the members of the trade and the general public at large, and they are trying to cash on the goodwill and reputation enjoyed by the Plaintiffs. A careful look at the impugned marks blatantly reveal that it is visually, phonetically and structurally identical to the Plaintiff’s registered trade mark. In view of the same, there is absolutely no doubt in the mind of this Court that the Plaintiffs are entitled to the reliefs sought for by them.
12. Considering the fact that this suit has been pending from the year 2007 onwards and the Plaintiffs had the benefit of the order of interim injunction throughout, there is no requirement to consider the reliefs of surrender of the materials carrying the offending marks and for rendition of accounts, at this length of time. It is enough if the relief of permanent injunction as sought for by the Plaintiffs is granted by this Court.
13. In the result, there shall be a decree for permanent injunction restraining the Defendants by itself, its servants, agents, distributors, or anyone claiming 8/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 through them from manufacturing, selling, advertising and offering the sale using the trademark “USHA” upon the goods, or in any media and use the same in invoices, letterheads and visiting cards or by using any other trademark which is in any way visually, phonetically or deceptively similar to the Plaintiffs’ registered trademark “USHA” or in any manner infringing the Plaintiffs’ registered Trademark Nos. 128504 and 195537.
14. There shall be a further decree of permanent injunction restraining the Defendants by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering the sale using the trademark “USHA” upon the goods or in any media and use the same in invoices, letterheads and visiting cards or by using any other trademark which is in any way visually, phonetically or deceptively similar to the Plaintiffs’ registered trademark “USHA” or in any manner infringing the Plaintiffs’ registered Copyright Nos.
25186/79 and 5348/70.
15. The Defendants are further restrained from by themselves, their servants, agents, distributors, or anyone claiming through them from manufacturing, marketing, distributing, offering or advertising the sale of electric fan of all kinds 9/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 using the mark “USHA”, colour scheme, getup of the cartons of “KSD”, “PULSAR”, “SONATA”, “ACCURA” fans or similar sounding names/colour scheme and get up in the course of their business and pass off their electric fans of all kinds using the trademark “USHA” for sale using the trademark colour scheme, getup of the cartons of “KSD”, “PULSAR”, “SONATA”, “ACCURA” fans as and for the goods of the Plaintiffs good or enable others to pass off.
16. In the result this suit is allowed. This Court is taking into consideration the fact that the Defendants were involved in blatant infringement of trademark of the Plaintiffs and that they had illegally attempted to misuse the reputation and goodwill earned by the Plaintiff, and unjustly enriched themselves. That apart, the Defendants did not even care to put forth their case by raising any defence before this Court and that speaks volumes on the conduct of the Defendants, and hence this Court is inclined to impose exemplary costs of Rs.2,50,000/-.
10.11.2021 Index:yes/no Internet : Yes /No rka List of witnesses were examined on the side of the Plaintiffs:-
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List of the exhibits marked on the side of the plaintiffs:-
Sl.No. Exhibits Dated Description of documents
1. Ex.P1 ----- Copies of the Relevant pages of Trade Mark journal showing advertisement and renewal with respect to the registration No.128504 and the registration certificate - photocopy
2. Ex.P2 ----- Copies of the Relevant pages of Trade mark journal showing advertisement and renewal with respect to the registration No.195537 and the Registration Certificate - photocopy
3. Ex.P3 ----- Copies of the Copy Right Certificate Nos.A 25186/79, A 45348/70 and A 9235/73 - Photocopy
4. Ex.P4 ----- 53rd Annual Report for the year 2006 - Original
5. Ex.P5 11.05.2001 Bills showing the sales of USHA at Chennai for 31.07.2001 the year 2001 – Photo copy
6. Ex.P6 30.08.2002 Bills showing the sales of USHA at Chennai for 31.08.2002 the year 2002 – Photocopy 16.09.2002
7. Ex.P7 07.05.2003 Bills showing the sales of USHA at Chennai for 13.05.2003 the year 2003- Photocopy 18.07.2003 09.09.2003 16.09.2003 29.09.2003 30.11.2003
8. Ex.P8 10.02.2004 Bills showing the sales at Chennai for the year
11.02.2004 2004- Photocopy 12.02.2004 11/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Sl.No. Exhibits Dated Description of documents 31.03.2004
9. Ex.P9 27.02.2005 Bills showing the sales of USHA at Chennai for 28.02.2005 the year 2005 – Photocopy 03.03.2005 07.03.2005 22.04.2005 11.07.2005
10. Ex.P10 23.03.2006 Bills showing the sales of USHA at Chennai for 25.03.2006 the year 2006- Photocopy 18.04.2006 29.12.2006 30.12.2006 31.12.2006
11. Ex.P11 29.03.1997 Bills showing the sales of USHA at Cuttack for the year 1996 – Photocopy
12. Ex.P12 30.08.1997 Bills showing the sales of USHA at Cuttack for the year 1997 – Photocopy
13. Ex.P13 24.09.1998 Bills showing the sales of USHA at Cuttack for 28.09.1998 the year 1998 – Photocopy
14. Ex.P14 31.08.1999 Bills showing the sales of USHA at Cuttack for the year 1999– Photocopy
15. Ex.P15 30.09.2000 Bills showing the sales of USHA at Cuttack for the year 2000 – Photocopy
16. Ex.P16 31.05.2001 Bills showing the sales of USHA at Cuttack for the year 2001 – Photocopy
17. Ex.P17 30.03.2003 Bills showing the sales of USHA at Cuttack for the year 2002 – Photocopy
18. Ex.P18 30.03.2004 Bills showing the sales of USHA at Cuttack for 31.03.2004 the year 2003 – Photocopy
19. Ex.P19 30.04.2004 Bills showing the sales of USHA at Cuttack for the year 2004 – Photocopy 12/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Sl.No. Exhibits Dated Description of documents
20. Ex.P20 31.12.2005 Bills showing the sales of USHA at Cuttack for 20.02.2006 the year 2005 – Photocopy
21. Ex.P21 Bills showing the sales of USHA at Jaipur for the year 1996-1997- Photocopy
22. Ex.P22 Bills showing the sales of Usha at Jaipur for the year 1997-1998 – Photocopy
23. Ex.P23 Bills showing the sales of Usha at Jaipur for the year 1998-1999 – Photocopy
24. Ex.P24 Bills showing the sales of Usha at Jaipur for the year 2000-2001 – Photocopy
25. Ex.P25 Bills showing the sales of Usha at Jaipur for the year 2002-2003 – Photocopy
26. Ex.P26 Bills showing the sales of Usha at Jaipur for the year 2003-2004– Photocopy
27. Ex.P27 Bills showing the sales of Usha at Jaipur for the year 2004-2005 – Photocopy
28. Ex.P28 11.04.2002 Bills showing the sales of Usha at Kolkatta for the 30.04.2002 year 2002 – Photocopy
29. Ex.P29 07.04.2003 Bills showing the sales of Usha at Kolkatta for the 09.04.2003 year 2003– Photocopy 17.04.2003 29.04.2003 30.04.2003
30. Ex.P30 09.04.2004 Bills showing the sales of Usha at Kolkatta for the 12.04.2004 year 2004– Photocopy 13.04.2004
31. Ex.P31 06.04.2005 Bills showing the sales of Usha at Kolkatta for the 08.04.2005 year 2005– Photocopy 19.04.2005 20.04.2005
32. Ex.P32 04.04.2006 Bills showing the sales of Usha at Kolkatta for the 13/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Sl.No. Exhibits Dated Description of documents 06.04.2006 year 2006– Photocopy 07.04.2006 08.04.2006
33. Ex.P33 17.08.1998 Bills showing the sales of Usha at Bhopal for the 27.08.1998 year 1998– Photocopy 29.08.1998 31.08.1998
34. Ex.P34 31.03.1999 Bills showing the sales of Usha at Bhopal for the 18.05.1999 year 1999– Photocopy 31.05.1999 23.06.1999 30.06.1999
35. Ex.P35 17.07.2000 Bills showing the sales of Usha at Bhopal for the 31.07.2000 year 2000– Photocopy
36. Ex.P36 05.02.2001 Bills showing the sales of Usha at Bhopal for the 28.02.2001 year 2001– Photocopy 31.08.2001 19.09.2001 30.11.2001 22.12.2001 27.12.2001 31.12.2001
37. Ex.P37 09.10.2002 Bills showing the sales of USHA at Bhopal for the 14.10.2002 year 2002- Photocopy 30.10.2002 31.10.2002
38. Ex.P38 28.02.2003 Bills showing the sales of Usha at Bhopal for the 03.03.2003 year 2003– Photocopy 30.04.2003 09.05.2003 31.05.2003 23.09.2003 27.09.2003 14/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Sl.No. Exhibits Dated Description of documents
39. Ex.P39 31.08.2004 Bills showing the sales of Usha at Bhopal for the 04.09.2004 year 2004– Photocopy 10.09.2004 13.09.2004
40. Ex.P40 28.03.2006 Bills showing the sales of Usha at Bhopal for the 30.03.2006 year 2006– Photocopy 31.03.2006 28.04.2006 29.04.2006 10.05.2006 11.05.2006
41. Ex.P41 30.03.1997 Bills showing the sales of USHA at Secunderabad 31.10.1998 for the year 1997 to 2006– Photocopy 31.08.1999 29.02.2000 06.11.2001 23.11.2002 23.06.2003 31.12.2004 29.07.2005 18.11.2006
42. Ex.P42 10.04.2001 Bills showing the sales of USHA at New Delhi for 28.04.2001 the year 2001 – Photocopy 30.04.2001
43. Ex.P43 16.04.2002 Bills showing the sales of USHA at New Delhi for 19.04.2002 the year 2002 – Photocopy 30.042002
44. Ex.P44 14.04.2003 Bills showing the sales of USHA at New Delhi for 19.04.2003 the year 2003 – Photocopy 23.04.2003 07.05.2003 16.06.2003 22.07.2003 15/17 https://www.mhc.tn.gov.in/judis C.S.No.313 of 2007 Sl.No. Exhibits Dated Description of documents
45. Ex.P45 30.04.2004 Bills showing the sales of USHA at New Delhi for 17.06.2004 the year 2004 – Photocopy 30.06.2004 31.07.2004
46. Ex.P46 03.06.2005 Bills showing the sales of USHA at New Delhi for 04.06.2005 the year 2005 – Photocopy
47. Ex.P47 30.04.2006 Bills showing the sales of USHA at New Delhi for the year 2006 – Photocopy
48. Ex.P48 --- Advertisement of the Plaintiffs in the magazine of The Week - Photocopy
49. Ex.P49 --- Catalogue of the Plaintiffs - Original
50. Ex.P50 --- Visiting Card of the 1st defendant - Original
51. Ex.P51 11.04.2006 Bill (Memo) of the 2nd defendant - Original
52. Ex.P52 --- Impugned guarantee card used by the defandants at USHA- Original
53. Ex.P53 --- Visiting card used by the Defendant - Original List of exhibits marked on the side of the defendants:-
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