Madras High Court
Prakash Ferrous Industries Private ... vs Mansarowar Ispat (India) Private ... on 5 June, 2024
Author: P.Velmurugan
Bench: P.Velmurugan
C.S. (Comm. Div.) No.1 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 05.06.2024
Coram:
THE HONOURABLE MR. JUSTICE P.VELMURUGAN
C.S. (Comm. Div.) No.1 of 2024
Prakash Ferrous Industries Private Limited
Represented by its Director-Mr.Pulkit Garg
No.36, First Floor, New Avadi Road,
Kilpauk Garden Colony
Kilpauk, Chennai - 600 010 ... Plaintiff
Vs.
Mansarowar Ispat (India) Private Limited
157E, 157U, 158A, 157UU, IDA
Kothur Mandal, Mahaboobnagar District
Telengana-509228 ... Defendant
Prayer: The suit filed under Order IV Rule 1 of the Madras High
Court Original Side Rules and Order VII Rule 1 of the Code of Civil
Procedure 1908 read with Sections 27, 28, 29, 134 and 135 of the Trade
Marks Act, 1999, read with Sections 2(1)(c)(xvii) and Section 7 of the
Commercial Courts Act, 2015 praying to pass judgment and decree against
the defendant on the following terms:
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C.S. (Comm. Div.) No.1 of 2024
a. A permanent injunction restraining the
defendants, their proprietors, partners, directors,
subsidiaries, affiliates, franchisees, officers, employees,
personnel, servants, agents, representatives including
wholesalers, distributors, stockists, retailers and anyone
acting for or on their behalf from in any manner directly
or indirectly using the trade mark "TIRUMALA and/or
TIRUMALA GOLD' and/or any other mark identical or
similar to the plaintiff's registered trade mark
TIRUMALA' under No.2080185 in Class 35 and
TIRUMALA device mark under Nos.4439606 and
4439607 in Classes 6 and 40 respectively amounting to
infringement of plaintiff's registered trade marks.
b. A permanent injunction restraining the defendant,
their proprietors, partners, directors, subsidiaries,
affiliates, franchisees, officers, employees, personnel,
servants, agents, representatives including wholesalers,
distributors, stockists, retailers and anyone acting for or
on their behalf from in any manner directly or indirectly
using trade mark TIRUMALA and/or 'TIRUMALA
GOLD' and/or any other mark identical or similar to the
Plaintiff's mark 'TIRUMALA' thereby passing-off their
products as that of the plaintiff;
c. An order directing the defendant to furnish all the data
and accounts of any and all transactions undertaken,
goods sold, services rendered and the profits obtained
during the course of their business relating to the sale of
goods under the impugned trade marks "TIRUMALA'
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C.S. (Comm. Div.) No.1 of 2024
and/or "TIRUMALA GOLD' and/or any other mark
identical or similar to the plaintiff's mark
"TIRUMALA';
d. An order for delivery up of any and all of defendant's
finished and/or unfinished products, materials including
packaging material, signage, cards, labels, brochures,
printed materials and any other material bearing the
impugned trade mark(s) and/or any mark which is
identical to and/or deceptively similar to that of the
plaintiff's trade mark "TIRUMALA" to the plaintiff for
the purpose of destruction; and
e. Costs of the suit.
For Plaintiff : Mr.P.V.Bala Subramaniam
Senior Advocate
for Mr.K.Premchandar
For Defendant : Set Ex-parte on 26.04.2024
JUDGMENT
This suit is filed for permanent injunction restraining the defendant from infringing and passing of the plaintiff's registered trade mark; direction to the defendant to furnish all the data and accounts of any and all transactions undertaken, goods sold, services rendered and the profits 3/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 obtained during the course of their business relating to the sale of goods under the impugned trade marks "TIRUMALA' and/or "TIRUMALA GOLD' and/or any other mark identical or similar to the plaintiff's mark "TIRUMALA'; an order for delivery up of any and all of defendant's finished and/or unfinished products, materials including packaging material, signage, cards, labels, brochures, printed materials and any other material bearing the impugned trade mark(s) and/or any mark which is identical to and/or deceptively similar to that of the plaintiff's trade mark "TIRUMALA", to the plaintiff for the purpose of destruction; and for the costs of the suit.
2. The brief averments made in the plaint;
The plaintiff is the Structural Steel Division of Prakash Group of Industries, which is an Engineering Conglomerate having business office in Chennai to manage the entire business activities of the plaintiff's 4/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 business. The beginning of Prakash Group of industries dated back to 1960s, and today, the said Group comprises several companies, each catering to the needs of different engineering sectors. Some of such companies are Prakash Agricultural Industries Pvt. Ltd., which is specialized in the manufacture of diesel engines, water pumps and pump sets; Prakash Diesel Pvt. Ltd., which is specialized in production of biomass, biogas and natural gas gensets, aside from welding equipment of all kinds; and Prakash Impex Pvt. Ltd. comprises the export wing of the operations and has also started manufacturing solar panels and inverters.
2 (a). The plaintiff, belonging to this famous Prakash Group, was found to carry on business of manufacturing and merchandising of all kinds of metal, their alloys, metallic tubes, pipes, bars, TMT bars and rods, wire rids, frames, sections, structures, ingots, billets, blooms strips, flats, plates, beams, pellets, cold and hot rolled sheets, ferro alloy, apogee iron 5/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 and ores, non-electric cables and wires of common metal, small items of metal hardware and other goods and ironmongery, which can be used across industries for multifarious purposes. With a massive and advanced steel plant at Chittoor, which was set up in 2007, the plaintiff established itself as a pioneer and reliable producer of Structural and Reinforcement Steel and is one of the top manufacturers in India today; its products are available in over 1000 retails outlets in South India alone. The plaintiff also exports its aforesaid products to various countries, including Sri- Lanka, Maldives, the UAE, Kenya, and Seychelles.
2 (b). The plaintiff enjoys an undeniable and enviable reputation and goodwill in the Indian market with respect to its offerings among the general public and from supplying to well-known companies, including the NHAI, Adani Group, Shriram Properties etc. including Tamil Nadu Housing Board, Tamil Nadu Electricity Board, Andhra Pradesh Power 6/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 General Corporation, Andhra Pradesh State Housing Corporation and other departments of the Government of Tamil Nadu and Andhra Pradesh. The plaintiff has accrued a lot of valuable reputation and goodwill in the market owing to the reliable and superior quality of its products, which are highly sought after and are one of the top-rated products in the country.
2(c). The plaintiff's website contains ample information about the plaintiff as well as its group companies and as an interface for interaction between the plaintiff and its consumers. The plaintiff has also taken several successful social media initiatives on Facebook and YouTube, which have brought the plaintiff closer to the public, who are frequently and continuously reminded as well as interact with the plaintiff and its brand "TIRUMALA".
2 (d). The trade mark "TIRUMALA" was honestly adopted in the 7/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 year 2007 and was put to extensive, widespread, and open use in the market and the plaintiff is the first to adopt the mark for class 6 goods, especially for iron bars. The mark "TIRUMALA" is an arbitrary mark in respect of the goods and service falling under class 6, 35 & 40 and bears no reference to the kind, quality, quantity or intended purpose of the products and the mark is highly distinctive. Since its establishment, the profile and popularity of the products sold by the plaintiff under its brand "TIRUMALA" have continuously increased. Hence, the plaintiff is well- recognized in India and has attained considerable reputation and goodwill through open, exclusive and extensive sales, promotion, use and dissemination of information about its trade mark "TIRUMALA" and its offerings thereunder. Therefore, the plaintiff enjoys common law rights in respect of its mark "TIRUMALA". The plaintiff has secured registration for the mark "TIRUMALA" and its formatives, which are all valid and existing in full force and effect till date.
8/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 2 (e). By virtue of its long, continuous, open and extensive use, the mark "TIRUMALA" has acquired secondary significance as indicative of the plaintiff and its offerings and the mark is exclusively associated with the plaintiff. In this regard, the plaintiff has spent a lot of time, effort and money in promoting, publishing and popularising its trade mark and the goods offered thereunder and the public associate the mark "TIRUMALA" with goods and services of the plaintiff and no one else. As a result, the mark "TIRUMALA" is immediately and exclusively identified and associated with the plaintiff by members of the trade as well as the public. Due to the various positive aspects of the plaintiff's products and its exclusive efforts, the plaintiff has been witnessing consistent growth in its annual sales turnover with respect to its products sold under the mark "TIRUMALA". The vast success enjoyed b the plaintiff having 1,265 crores of turnover for the financial year 2022-2023, which reflected in the sales figures of the plaintiff, is indicative of the covetable reputation and 9/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 goodwill that the plaintiff has acquired and has been enjoying over the years and the trust that the public has on the plaintiff's products. The plaintiff's products under the mark "TIRUMALA" are one of the best- selling TMT bars and class 6 goods in the country.
2 (f). By virtue of prior adoption and use, long continuous, open and extensive use of their said mark for about 15 years and the goodwill and reputation accrued in its favour, the plaintiff has exclusive and proprietary rights in respect of the trade mark "TIRUMALA" under the common law in addition to the rights conferred by the above mentioned registration and the same is indicative exclusively of the plaintiff and its offerings. Use of the mark "TIRUMALA" or any other deceptively similar mark by a third party will create wrong association with the plaintiff and the general public will be deceived to buy other quality products. The gravity of such responsibility is reflected in the extensive precautions and certifications 10/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 obtained by the plaintiff with respect to its products offered under the mark "TIRUMALA", based on which the public has placed immense trust on the plaintiff and products arising therefrom.
2(g). Such being so, in August 2022, the plaintiff was made award of the defendant's sale of TMT steel bars bearing the trade mark "TIRUMALA" and "TIRUMALA GOLD" by its connections in the trade. The mark "TIRUMALA GOLD" is conspicuously engraved on the defendant's TMT bars, which is identical to the manner in which the plaintiff depicts its trade mark "TIRUMALA" on its products. The further particulars of the defendant were obtained through market connections of the plaintiff and further ascertained on coming across the defendant's brochure for the infringing goods.
2 (h). Upon conducting a search on the internet, the plaintiff came to 11/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 know that the defendant is actively marketing their products on indiamart.com and is using the plaintiff's trade mark "TIRUMALA" with respect to TMT bars which is of identical description as the plaintiff's products falling under class 6. The defendant is using "TIRUMALA GOLD" as its trademark and widely advertises the same in online platform, attracting customers from Chennai as well. Over the internet, including on Indiamart.com, the plaintiff's and defendant's products are both displayed on the same page. The plaintiff's and defendant's products are also stocked, marketed and sold in the same location side-by-side which further increases the likelihood of confusion and deception in the marketplace as well as dilute the brand "TIRUMALA" of the opponent. The defendant without any authorization or permission, is dishonestly using an identical mark with respect to identical products sharing common trade channels and target consumers in bad faith.
12/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 2 (i). The defendant is openly marketing, advertising and offering for sale of the goods under the mark "TIRUMALA/TIRUMALA GOLD"
through various media, including online medium, in Chennai. The offering for sale, advertisement and marketing amounts to "use" as per the provisions of Section 29(6) of the Trade Marks Act, 1999. The defendant has intentionally and calculatedly, slavishly copied the plaintiff's popular mark "TIRUMALA" on their infringing products to deceive and cause confusion in the market.
2 (j). Hence, the plaintiff issued a legal notice dated 26.08.2022 to the defendant for which, on 14.09.2022, the plaintiff received a reply from the defendant alleging that they have been using the mark TIRUMALA/TIRUMALA GOLD with respect to TMT bars since 2012 and that the plaintiff cannot claim any exclusivity over the mark "TIRUMALA". However, they did not attribute any reason in support of 13/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 their claim in their reply notice nor adduced any document to prove that it was using the mark "TIRUMALA" as alleged.
2 (k). In order to resolve the matter amicably, the plaintiff, on 13.10.2022, filed for pre-institution mediation before the Tamil Nadu State Legal Services Authority. However, the parties could not settle the dispute by mediation because of which, the mediation process failed and the defendant was not inclined to stop their use of the impugned mark "TIRUMALA" and "TIRUMALA GOLD" which shows their bad intention to ride on the goodwill of the plaintiff to gain illegal profits which is detrimental to the plaintiff's business and of the distinctiveness of the plaintiff's brand "TIRUMALA". Hence, the present suit is filed.
3. The defendant had not filed the written statement and hence, the sole defendant was set ex-parte by this Court on 26.04.2024. 14/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024
4. In order to substantiate the claim of the plaintiff, one Pulkit Gard, the Director and Authorized Signatory of the plaintiff company was examined as P.W.1 and he has reiterated the averments made in the plaint in his proof affidavit and marked 23 documents as Ex.P.1 to Ex.P.23 in which, Ex.P.1 is the Memorandum of Association dated 14.12.2007, Ex.P.2 is the Articles of Association of plaintiff dated 14.12.2007, Ex.P.3 is the Incorporation Certificate of plaintiff dated 26.12.2007, Ex.P.4 is the fresh Certificate of Incorporation consequent upon Change of Name, dated 27.02.2009, Ex.P.5 is the Incorporation Certificate of plaintiff dated upon change of Registered Office from the State of Karnataka to Andhra Pradesh dated 22.06.2010, Ex.P.6 is the Legal User Certificate for the Trademark Registration of the plaintiff Trademark under No.5061790 in Class 6 for the mark "TIRUMALA" along with the Registration Certificate dated 24.01.2024, Ex.P7 is the Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.2080185 in Class 35 for 15/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 the mark "TIRUMALA" along with the Registration Certificate dated 29.03.2023, Ex.P8 is the Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.4439606 in Class 6 for the mark "TIRUMALA" along with the Registration Certificate dated 29.03.2023, Ex.P9 is the Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.4439607 in Class 40 for the mark "TIRUMALA" long with the Registration Certificate dated 29.03.2023, Ex.P10 is the Advertisement and Marketing bills and materials of the plaintiff company for their offerings under the mark "TIRUMALA" (Series) dated 22.05.2008 to 28.10.2019, Ex.P11 is the printout of the Excise Returns and photocopy of the Sales invoices of the Plaintiff bearing the mark "TIRUMALA" (Series) dated 10.10.2012 to 14.03.2022, Ex.P12 is the Chartered Accountants Certificates certifying the sales turnover and promotional expenditure of the plaintiff from the year 2007 dated 27.06.2023, Ex.P13 is the printout of the Photographs of recognitions and 16/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 awards, bestowed upon the plaintiff for its offerings under the mark "TIRUMALA" (Series), Ex.P14 is the printout of the Brochure circulated by the defendant, Ex.P15 is the Office copy of the Legal Notice issued by the plaintiff to the defendant dated 26.08.2022, Ex.P16 is the photocopy of the Reply Notice issued by the defendant to the Plaintiff dated 07.09.2022, Ex.P17 is the photocopy of the Section 12-A application for pre-suit mediation filed before the Tamil Nadu State Legal Authority, Chennai dated 13.10.2022, Ex.P18 is the Mediation Failure Report dated 02.02.2023 issed by the Tamil Nadu State Legal Services Authority, Ex.P19 is the printout of the Documents downloaded from YouTube.com and Indiamart.com wherein, the defendant's impugned goods "TIRUMALA GOLD" and plaintiff's goods under the mark "TIRUMALA" are available on the same page (series) 28.03.2023, Ex.P20 is the photographs of the plaintiff's products under "TIRUMALA" and defendant's products under "TIRUMALA GOLD", both for class 6 goods 17/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 together in the market dated 02.09.2023, Ex.P21 is the printout of the Notices of Opposition filed by the defendant against the plaintiff's trade mark application Numbers:5061791 and 5525126 (series) dated 27.04.2023, Ex.P22 is the printout of the Counter-Statements filed by the plaintiff in support of the plaintiff's application Numbers:5061791 and 5525126 (series) dated 23.06.2023 and Ex.P23 is the Board Resolution of plaintiff dated 02.11.2023.
5. On a perusal of the averments made in the plaint and proof affidavit filed by P.W.1 and also the documentary evidence marked on the side of the plaintiff, this Court finds that the plaintiff company has proved its claim.
6. Therefore, the suit is decreed as prayed for with cost.
05.06.2024 (1/2) 18/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 List of witnesses examined on the side of the plaintiff :
Mr.Pulkit Garg – P.W.1 List of Exhibits marked on the side of the plaintiff:
S.No. Exhibits Description of documents
1 Ex.P.1 Memorandum of Association dated 14.12.2007
2 Ex.P.2 Articles of Association of plaintiff dated 14.12.2007
3 Ex.P.3 Incorporation Certificate of Plaintiff dated 26.12.2007
4 Ex.P.4 Incorporation Certificate of Plaintiff dated upon change of
name dated 27.02.2009
5 Ex.P.5 Incorporation Certificate of plaintiff dated upon change of
Registered Office dated 22.06.2010
6 Ex.P.6 Legal User Certificate for the Trademark Registration of
the plaintiff Trademark under No.5061790 in Class 6 for the mark "TIRUMALA" along with the Registration Certificate dated 24.01.2024 7 Ex.P.7 Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.2080185 in Class 35 for the mark "TIRUMALA" along with the Registration Certificate dated 29.03.2023.
8 Ex.P.8 Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.4439606 in Class 6 for the mark "TIRUMALA" along with the Registration Certificate dated 29.03.2023.
19/22
https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 S.No. Exhibits Description of documents 9 Ex.P.9 Ex.P9 Legal User Certificate for the Trademark Registration of the Plaintiff Trademark under No.4439607 in Class 40 for the mark "TIRUMALA" along with the Registration Certificate dated 29.03.2023.
10 Ex.P.10 Ex.P10 Advertisement and Marketing bills and materials of the plaintiff company for their offerings under the mark "TIRUMALA" (Series) dated 22.05.2008 to 28.10.2019. 11 Ex.P.11 Ex.P11 Printout of the Excise Returns and photocopy of the Sales invoices of the Plaintiff bearing the mark "TIRUMALA" (Series) dated 10.10.2012 to 14.03.2022. (Certificate u/s 65-B of L.E. Act Produced).
12 Ex.P.12 The Chartered Accountants Certificates certifying the sales turnover and promotional expenditure of the plaintiff from the year 2007 dated 27.06.2023.
13 Ex.P.13 Printout of the Photographs of recognitions and awards bestowed upon the Plaintiff for its offerings under the mark "TIRUMALA" (Series). (Certificate u/s 65-B of I.E. Act Produced).
14 Ex.P14 Printout of the Brochure circulated by the Defendant.
(Certificate u/s 65-B of I.E. Act Produced).
15 Ex.P15 The Office copy of the Legal Notice issued by the plaintiff to the defendant dated 26.08.2022.
16 Ex.P16 Photocopy of the Reply Notice issued by the Defendant to the Plaintiff dated 07.09.2022.
17 Ex.P17 Photocopy of the Section 12-A application for pre-suit mediation filed before the Tamil Nadu State Legal Authority, Chennai, dated 13.10.2022.
18 Ex.P18 Mediation Failure Report dated 02.02.2023.
20/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 S.No. Exhibits Description of documents 19 Ex.P19 Printout of the Documents downloaded from
YouTube.com and Indiamart.com wherein the defendant's impugned goods "TIRUMALA GOLD" and plaintiff's goods under the mark "TIRUMALA" are available on the same page (series) 28.03.2023. (Certificate u/s 65-B of I.E. Act Produced).
20 Ex.P20 Photographs of the Plaintiff's products under "TIRUMALA" and defendant's products under "TIRUMALA GOLD", both for class 6 goods together in the market dated 02.09.2023. (Certificate u/s 65-B of I.E. Act Produced).
21 Ex.P21 Printout of the Notices of Opposition filed by the defendant against the plaintiff's trade mark application Numbers:5061791 and 5525126 (series) dated 27.04.2023. (Certificate u/s 65-B of L.E. Act Produced).
22 Ex.P22 Printout of the Counter-Statements filed by the plaintiff in support of the plaintiff's application Numbers:5061791 and 5525126 (series) dated 23.06.2023.
23 Ex.P23 Board Resolution of plaintiff dated 02.11.2023 List of witnesses examined on the side of the defendant - Nil List of exhibits marked on the side of the defendant - Nil 05.06.2024 (2/2) Index : Yes / No Speaking Order : Yes / No Neutral Case Citation : Yes/No Ksa-2 21/22 https://www.mhc.tn.gov.in/judis C.S. (Comm. Div.) No.1 of 2024 P.VELMURUGAN. J.
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