Madras High Court
Witco (India) Pvt.Ltd vs Nitco on 25 February, 2009
C.S.No.372 of 2008
IN THE HIGH COURT OF JUDICATURE AT MADRAS
ORDERS RESERVED ON : 15.12.2021
PRONOUNCING ORDERS ON : 22.12.2021
Coram:
THE HONOURABLE JUSTICE MR.N.ANAND VENKATESH
Civil Suit No.372 of 2009
(Comm. Suit)
WITCO (India) Pvt.Ltd.,
Rep.by its Director V.P.Nurdeen
No.103, Usman Road
T.Nagar, Chennai 600 017. .. Plaintiff
.Vs.
1.NITCO
represented by its partners
Zakir Hussain and Anis Fathima
W-109, Ground Floor 3rd Avenue
Anna Nagar, Chennai 600 040.
2.Mr.Zakir Hussain
W-109, Second Floor 3rd Avenue
Anna Nagar, Chennai 600 040.
3.Anis Fathima
W-109, Second Floor 3rd Avenue
Anna Nagar, Chennai 600 040. ..Defendants
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C.S.No.372 of 2008
Prayer: Civil Suit has been filed under Order VII Rule 1 of C.P.C.
And Order IV Rule 1 of O.S.Rules r/w Sections 28, 29, 134 and 135 of
the Trade Marks Act, 1999, praying to pass a judgment and decree.
(i)For a permanent injunction, restraining the Defendants, their
partners, servants, agents, men, or anyone claiming through them from in
any manner infringing the registered Trade/Service Mark fo the Plaintiff
viz., WITCO in any form deceptively similar to the business name of the
Plaintiff.
(ii)For a permanent injunction restaining the Defendants their
partners, servants, agents, men or anyone claiming throug them from in
marketing, distributing, offering, advertising or using the Mark 'Nitco' in
any form or variation in English Language and or any other Vernacular
language with or withou the tagline “The luggage Expert” or similar
sounding names or any other mark deceptively similar to the Plaintiff's
mark witco with identical colour scheme, get up and layout inthe course
of their Trade/services and passing off goods or services or enabling
tothers to pass off the goods or services as the goods of the Plaintiff or as
services provided by the Plaintiff.
(iii)For a mandatory injunction directing the Defendants to deliver
to the Plaintiff all the business materials, goods, invoices, bills, receipts,
books of accounts, cartons, advertisement materials, hoardings, letter-
heads, visiting cards, office stationery and all or any other materials
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C.S.No.372 of 2008
containing/bearing the Mark 'Nitco' with or without the logo “The
Luggage Expert” or any other deceptively similar mark or labels for
destruction.
(iv)directing the defendants to pay to the Plaintiff a sum of
Rs.10,00,000/- by way of damages for the acts of infringement and
passing off.
(v)For apreliminary decree directng the Defendants to render and
account for profit made by them by the use of the mark 'Nitco' with or
without the logo/tagline “the luggage expert” as and from 28.02.2009 and
for a final decree in favour of the Plaintiff for the amount of profits found
to have been made by the Defendants after rendering accounts, and
(vi)Directing the Defendant to pay to the Plaintiffs' the costs to the
suit.
For Plaintiff : Mr.Sashidhar Sivakumar
for M/s.S.Rajasekar
For Defendants : Mr.Richardson Wilson
for M/s.P.Wilson Associates
for D1 to D3
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C.S.No.372 of 2008
JUDGMENT
The instant suit has been filed seeking for a permanent injunction, restraining the Defendants, their partners, servants, agents, men or anyone claiming through them from in any manner infringing or passing off of the Plaintiff’s registered trademark “WITCO” and injunct the Defendants from using the mark “NITCO” with or without the tagline or using similar sounding names or other marks deceptively similar to the Plaintiffs’, including “SITCO” or any other variation thereof which is visually, phonetically and structurally similar to the Plaintiff's registered trademark. The Plaintiff has also sought for a direction to the Defendants to deliver to the Plaintiff all the business materials, goods, invoices, etc., containing the infringing mark and has further prayed for a direction to the Defendants for rendition of accounts.
CASE OF THE PLAINTIFF:
2.The case of the Plaintiff pertains to infringement and passing off of the registered trademark “WITCO”. The trademark “WITCO” was registered by the Plaintiff under Class 16 and 42 in Registration No.692172 on 12-11-2003. The Plaintiff states that their 4/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 Firm “WITCO' was started by late M.P.C.Mohammed, father of the directors of the Plaintiff Company in the year 1951. Further, in the 1970’s “WITCO” gradually transformed from the wholesale business into retail business. The Plaintiff further states that their Firm “WITCO” was duly incorporated as a Private Limited Company under the Companies Act, 1956 in the name and style of ‘WITCO INDIA PVT LIMITED’’ in 1988. The Plaintiff states that their original “WITCO” logo was redesigned in 2005 after spending considerable time and research and that the present logo type was designed to give a young, casual, friendly and fresh look. The further claim of the Plaintiff is that their “WITCO” logo which has been continuously used by the Plaintiff since 1951 has a distinctive design i.e., three dots above the ‘i’, which was specially created for the Plaintiff Company. The Plaintiff states that they have been using the tagline “The Luggage Expert” till recently prior to the initiation of the suit along with their brand name “WITCO”. The Plaintiff further states that around 2008-09 the tagline was changed from “The Luggage Expert” to “Travel in Style”, however, even as on date, the original tagline “The Luggage Expert” which was continuously used by the Plaintiff Company for the past several decades is identified by the 5/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 general public with the brand name of the Plaintiff. It is claimed by the Plaintiff that a considerable amount of money was spent by the Plaintiff during the period 2005-09 towards newspaper, magazine and TV ads, etc. The Plaintiff further claimed that they enjoyed a considerable customer base and had a turnover of more than twenty crores for the assessment years 2007-08 and 2008-09 respectively. The Plaintiff states that the goodwill and reputation earned by the Plaintiff under the name “WITCO” with respect to its products and services is not only in India but also in neighbouring countries and that the expression “WITCO” has been used in India to such an extent that the public associate the name “WITCO” only with that of the Plaintiff’s Company.
3.The grievance of the Plaintiff is that on 28-02-2009 the Defendants opened a showroom under the name “NITCO” for the same class of business as that of the Plaintiff, adjacent to the premises within the same building where the Plaintiff has been running their exclusive showroom for the past 19 years. The Plaintiff claims that the Defendants have used a mark that is visually, structurally and phonetically similar to that of the Plaintiffs’ to confuse the general public. The Plaintiff further 6/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 states that the mark “NITCO” has been displayed in a confusingly similar artistic work as that of “WITCO” in the same get-up, paneling and same scheme of arrangement both structurally and phonetically along with the tagline “The Luggage Expert”. The Plaintiff claims that the Defendants have adopted the mark “NITCO” with a malafide intention of making illegal gains and commercially exploiting the goodwill and reputation earned by the Plaintiff over several decades. The further claim of the Plaintiff is that the malafide intention of the Defendants is evident from the on-going rent control proceedings initiated by the 3rd Defendant and her brother against the Plaintiff. The Plaintiff states that these proceedings were initiated with a malafide intent to evict the Plaintiff from the premises were they have been conducting business for the past 19 years and commence an identical business and exploit the tremendous goodwill earned by the Plaintiff.
4. Further, a Division Bench of this Hon’ble Court on 30-11-
2009 in O.S.A. Nos.307 and 308 of 2009, granted an order of ad-interim injunction restraining the Defendants from infringing in any manner the registered trademark of the Plaintiff. The Plaintiff states that, thereafter, 7/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 the Defendant changed their name from “NITCO” to “SITCO”. The Plaintiff states that the mark “WITCO” has been used by the Plaintiff uninterruptedly from the year 1951 and that the Defendants had commenced their business only in the year 2009, and hence, the Plaintiff has exclusive right to use the mark.
CASE OF THE DEFENDANT:
5. The case of the Defendants is that the property on which the commercial complex is established was owned by the third Defendant’s father, where the departmental store named ‘Gaylord Stores’ was in operation from the year 1975 onwards. The departmental store was then closed and ‘Gaylord Shoe Store’ was opened in the same premises which was subsequently renamed as ‘Gaylord Luggage and Bag Stores’ with effect from 16.11.2007. Upon execution of a deed of settlement, the property was said to be divided and delivered to the second and 3rd Defendant, along with an undertaking with the 3rd Defendant that she shall not carry any business with the name ‘Gaylord’.
Subsequent to this undertaking, M/s.NITCO, a partnership Firm, between 8/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 the second Defendant and third Defendant, in pursuance of a Partnership Deed dated 25.02.2009, is said to have been established, dealing specifically in services of luggage and bags, travel accessories, shoes and garments. The service mark “NITCO” was applied for registration under the Trademarks Act, 1999 on 27.02.2009, by the Defendants. The Defendants claim that the mark has a unique secondary meaning resulting from the fusion of “knitting” and “consumers”.
6.The further case of the Defendants is that, the Plaintiff in 1961 obtained registration for mark “WITCO”, which was written in all capitals on a diamond shaped mark and a red-coloured border, under the Goods and services class of Diaries. The Plaintiff registered the mark on 12.11.2003 under the category of paper and paper article, printed matter and stationary as well. It was claimed by the Defendants that the Plaintiff logo does not include any tag line in the registered mark, whereas the first Defendant mark denoted the term “NITCO”, the letter 'N' being capital written in black font on a white background, followed by the tagline “The Luggage Expert”. The mark is also denoted in Tamil vernacular at the bottom right side of the board. The Plaintiff, having 9/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 abandoned the tagline “the luggage expert” and using “Travel in style” during the filing of this suit, was considered by the Defendants as a leeway to use the tagline.
7.It was pleaded by the Defendants in the written statement that there was no Mala-fide intention whatsoever on part of the Defendants in using the mark as there is no phonetic or visual similarity between the two marks. This was bolstered by the Plaintiff’s statement that the letters 'N' and 'W' are phonetically dissimilar when read aloud. The Defendants further contest the lack of material facts by the Plaintiff Company to substantiate the damage suffered by them due to the use of “NITCO” by the Defendants.
8. The specific stand taken by the Defendants is that since the Plaintiff Company had declared on their official website that the Company “WITCO” had been wound up, the Plaintiff Company does not have a legal entity to maintain this suit.
9.Based on the above pleadings, the following issues were 10/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 framed by this Court :
(i) Whether the registered trade and service mark viz.
"WITCO", of the Plaintiff has been infringed by the Defendants with the identical design and appearance?
(ii) Whether the user of the mark "NITCO" is having identical design and appearance and whether the same is also deceptively similar to that of trade and service mark viz. "WITCO" of the Plaintiff?
(iii) Whether the Plaintiff is entitled to a permanent injunction as prayed for?
(iv) Whether the Plaintiff is entitled for a mandatory injunction as prayed for?
(v) Whether the Defendants are liable to pay a sum of Rs.10 lakhs by way of damages, for acts of infringement and passing off, to the Plaintiff?
(vi) Whether the Plaintiff is entitled to a preliminary decree as prayed for?
(vi) To what relief, the Plaintiff is entitled?
10.The suit was pending before the regular Court and was 11/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 transferred to the Commercial Division. The Commercial Division determined jurisdiction on 04.07.2019. Pursuant to the same, the suit was tried before the Commercial Division.
11.The Plaintiff examined PW1 and Exhibits P-1 to P-35 were marked. The Defendant examined DW1 and Exhibits D-1 to D-21 were marked.
12. Heard Mr.Sashidhar Sivakumar, learned for the Plaintiff and Mr.Richardson Wilson, learned counsel appearing on behalf of the defendants 1 to 3.
DISCUSSION AND FINDINGS ON THE ISSUES:
13. The first and second issues together can be taken up for consideration. In the present case, the background facts will have to be necessarily taken into consideration. The Plaintiff Company is a well-known retailer in travel luggage needs and accessories. Even though 12/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 the venture was started as plastic products in the year 1951, by the year 1970, the Plaintiff started getting into retail business of selling handcrafted luggage. Thereafter, it became Private Limited under the Companies Act, 1956 in the name and style of WITCO (INDIA) Pvt Ltd on 18-11-1988, which is clear from Ex.P-1. The trademark “WITCO” was registered under Class 42 and 16 pertaining to luggage, travel bags and travel accessories in the year 2003. The same is clear from Ex.P-14. Subsequent to obtaining the registration of the trademark in the year 2003, the Plaintiff Company also started redesigning the logo around February - May 2005. This redesigned logo, with a change in the type of font, can be seen from Ex.P-24. The Plaintiff Company was also using the tagline “The luggage expert” even just prior to the institution of the present suit and it can be seen from Ex.P-27. Subsequently, the Plaintiff Company changed the tagline to “travel in style”. It is also seen from Exhibits P5 to P12 and P15 to P18, that the Plaintiff Company had spent a substantial amount for advertisement and building up their brand during the period of 2005-09. It can also be seen that the Plaintiff enjoyed a considerable consumer base and had a turnover of more than 22 crores for the period 2007-09 and the same is evident from Exhibits 13/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 P13 and P20.
14. The most crucial fact to be noted in this case is that the Plaintiff Company was a tenant since the year 1990 in the premises that was owned by the 2nd Defendant and his family. The father of the 3rd Defendant was running a shoe store called ‘Gaylord luggage and bag store’. This store was situated adjacent to the shop run by the Plaintiff Company. The eviction proceedings were initiated by the 3rd Defendant and thereafter there was some understanding within the family whereby, the 2nd and 3rd Defendants formed a partnership firm in the name of the 1st Defendant during February 2009. The firm was registered with the registrar of firms in the name “NITCO”. The firm also applied for the registration of the trademark “NITCO” under the services category pertaining to luggage, bags, travel accessories, shoes and garments. Surprisingly from February 2009 onwards, the Defendants started using the mark “NITCO” with a tagline ‘The luggage expert’ and the business conducted by the Defendants pertained to the same services and goods as that of the Plaintiffs. It should be noted that this business was started in 14/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 the adjacent premises in the same building with the Plaintiff running the store under the name “WITCO” from the year 1990 and the Defendants starting a store in the name of “NITCO” during February 2009. The manner in which the mark “NITCO” was displayed and the get-up, paneling and the scheme of arrangement of the look with the tagline “The luggage expert’ is evident from Exhibits P21, P28 and P35 respectively.
15.Immediately thereafter, the Plaintiff issued a legal notice to the Defendants on 14-3-2009, calling upon them to cease and desist from using the mark “NITCO” and this notice has been marked as Exhibit P22. The suit was thereafter instituted during March 2009. In the meantime, the Defendants applied for the trademark “NITCO” under Class 35 through an application dated 27-2-2009. It is evident from Exhibit D19 that the registration was made under Class 35 namely, for retail sale of luggage and bag, travel accessories under the trademark “NITCO. Strictly speaking, no reliance can be placed on Exhibit D19 since the certificate itself says that it is not for legal use and legal user certificate has not been marked on the side of the Defendants. However, even the admitted case of the Plaintiff is that the Defendants obtained a 15/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 registered mark “NITCO'. Therefore, this Court will proceed further on the premise that there is a registered trademark in favour of the Defendants under the mark “NITCO”. For completion of the facts, it is also seen that the Plaintiffs apart from obtaining two earlier registered certificates in the year 1961 and in the year 2003, had also applied for the registration of their mark on 17-7-2009 with the tagline,under class 35 and they obtained a fresh registration certificate thereafter.
16. For the sake of convenience, this Court will take into consideration the registered trademark that was granted to the Plaintiff for their application dated 12-3-2003. The trademark that was granted under this application and as found in Exhibit P14 is . By the time the suit was instituted, the Defendants had applied for the registered mark NITCO and obtained . Therefore, there are two registered trademarks, one in favour of the Plaintiff and the other in favour of the Defendants. Both the parties have not applied for the rejection or revocation of the trademark till date. Therefore, both the parties will have the protection of their registered Trademark under 16/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 Section 28(3) of the Trademarks Act, 1999 (hereinafter called as ‘the Act’). In a case of this nature, the Hon’ble Supreme Court after considering all the earlier decisions has come up with a solution in S. Syed Mohideen vs. P. Sulochana Bai reported in 2016 2 SCC 683. Para 33.2 of the judgement gives a clear indication and for the sake of convenience, the same is extracted hereunder:
33.2 We uphold the said view which has been followed and relied upon by the Courts in India over a long time. The said views emanating from the Courts in India clearly speak in one voice, which is, that the rights in common law can be acquired by way of use and the registration rights were introduced later which made the rights granted under the law equivalent to the public user of such mark. Thus, we hold that registration is merely a recognition of rights pre-existing in common law and in case of conflict between the registered proprietors, the evaluation of the better rights in common law is essential as the common law rights would enable the Court to determine whose rights between the two registered proprietors are better and superior in common law which have been 17/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 recognized in the form of registration by the Act.
17. A careful reading of the ratio laid down by the Hon’ble Supreme Court only shows that registration is merely a recognition of the rights pre-existing in common law and in case of conflict between two registered proprietors, a valuation of the better rights in common law would be the guiding factor.
18. In view of the above, this Court has to necessary apply the test that is normally applied in a case of passing-off which is a Common Law right, that is now put into action by the Plaintiff against the impugned mark of the Defendants and this Court will evaluate as to who has the better right in this case.
19.It is an admitted case that the Plaintiff has been using the trademark “WITCO” under Class 42 and 16 at least form the year 2003 onwards. This fact is well-known to the Defendants since the Plaintiff was running the business in the premises belonging to the 2nd and 3rd 18/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 Defendants and their family members. Till the year 2009, there was a store named ‘Gaylord’ and that was also a luggage and bag store. If the status had continued in the same way, there would not have been any confusion. The confusion started only from February 2009, when the Defendants all of a sudden changed the name and style of their store to “NITCO”. It must be borne in mind that the Defendants were using this name with respect to the very same services and goods as that of the Plaintiff in the adjacent premises, in the very same building where the Plaintiff was running the store “WITCO” since the year 1990. This fact must be seen from the background that there was an eviction proceeding pending against the Plaintiff and this was probably a tactic used by the Defendants to compel the Plaintiff to close down their business.
20. In a passing off action, the three ingredients to be established are that the Plaintiff was a prior user and had a goodwill/reputation. The next ingredient is that the Defendants are attempting to misrepresent or is trying to deceive the customer by using a deceptive mark and the third ingredient is that the Plaintiff suffers an injury or a loss or there is a possibility of loss. Even after the coming into 19/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 force of the Act, the passing off action has been given a statutory recognition and it can be undertaken both in case of a registered and unregistered trademark. The indication with regard to the statutory recognition given to passing-off action can be seen from Section 11(3)
(a), Section 27(2), Section 134(1)(c) and Section 135 of the Act.
21. In the present case the Plaintiff is admittedly the prior user of the trademark “WITCO” and it can also be seen from the materials placed before this Court that they have gained sufficient goodwill and reputation. The turnover of the Plaintiff Company and the amount spent by them towards advertisement and brand building is considerable and it is clear from the documents marked on the side of the Plaintiff. While so, the Defendants knowing fully well about the trademark of the Plaintiff and their reputation and goodwill started using the impugned mark “NITCO” from February 2009. The culpable mind of the Defendants in using the impugned mark “NITCO” is quite apparent.
The impugned mark “NITCO” bears such an overall similarity to the trademark “WITCO” with the color scheme, getup, paneling and the scheme of arrangement and it is likely to deceive not only an ordinary 20/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 customer but even an informed customer. The Defendants have even used the tagline “The luggage expert” that was used by the Plaintiff's. This Court by following the test prescribed by the Hon’ble Supreme Court in Parle products (P) Ltd. vs J.P. and Co., Mysore reported in 1972 1 SCC 618 finds that the impugned mark bears such an overall similarity both visually and phonetically and it will certainly create confusion in the mind of a person of average intelligence and of imperfect recollection.
22. Insofar as the likelihood of loss that could be suffered by the Plaintiff due to the usage of the impugned mark by the Defendants, the deposition of DW1 in the cross examination shows that in the very first year after adopting the impugned mark, the turnover of the 1st Defendant firm was about 75 lakhs and thereafter increased to 1.5 crores. This was the level at which the business had taken off after the Defendants started using the impugned trademark. To that extent, obviously the Defendants had made in roads into the business of the Plaintiff and used the impugned mark as a Spring Board to unjustly 21/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 enrich themselves.
23.It is clear form the above analysis that the Defendants are practicing deceit and trying to sell goods/services on the goodwill/reputation of the Plaintiff and obtained an economic advantage/gain. This Court finds that the Plaintiff has a better/superior right in common law and has made out a case for passing-off action. The 1st and 2nd issues are answered accordingly.
24.This Court will now take up the 3rd and 4th issues for consideration. The Plaintiff has the advantage of an order of ad-interim injunction in their favour by virtue of the orders of the Division Bench passed in OSA Nos.307 and 308 of 2009, 30-11-2009. This order was also subsequently confirmed by the Hon’ble Supreme Court when the special leave petitions filed by the Defendants came to be dismissed. Thus, from December 2009 onwards the Defendants have been injuncted from using the mark “NITCO”. What the Defendants did thereafter exposes their culpable/deceitful mind. The Defendants started using the 22/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 mark “SITCO” in the place of the impugned mark “NITCO”. This led to contempt proceedings being initiated by the Plaintiff and these applications came to be dismissed by giving liberty to the Plaintiff to work out the remedy in the suit itself. Even though the Defendants are attempting to sound innocuous by giving their own justification for using the impugned mark “NITCO”, their conduct after the interim injunction order was passed against them, very clearly exposes their mind when they started using the mark “SITCO”. The Defendants always wanted to use a mark which is deceptively similar to the trademark of the Plaintiff and that is the reason why they started using the impugned mark “NITCO” and thereafter started using the mark “SITCO” and even if this had been injuncted, I am sure that the Defendants would have come up with some more permutations and combinations to ensure that their mark ends with the letters “ITCO”. It is not as if the Defendants had no other name to run their business. In fact,it was run under the name ‘Gaylord’ prior to the year 2009. If they had been so confident about their business, they need not have attempted to piggyback on the trademark of the Plaintiff and take undue advantage of the goodwill and reputation of the Plaintiff. Therefore, the usage of the mark “SITCO” by the Defendants 23/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 does not make their case any better and it was a clear ploy that was used by the Defendants to get over the interim order passed in the appeal.
25.There is yet another subsequent development that has taken place in the present case. Witco has closed down all their showrooms recently after the pandemic situation had hit their business very badly. However, it must not be forgotten that the brand value is always there for their registered mark “WITCO” and they can use it and revive their business at any point of time. Therefore, closing down all their showrooms will not deprive the Plaintiff from getting the relief in the present suit and that will also not be a ground to permit the Defendants to continue to use the impugned mark “NITCO or SITCO” or any other mark which is structurally and phonetically similar to that of the registered mark of the Plaintiff.
26. In view of the above discussion, this Court has absolutely no hesitation to hold that the Plaintiff is entitled for the relief 24/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 of permanent injunction and mandatory injunction as sought for. The 3 rd and 4th issues are answered accordingly.
27. Insofar as the 5th and 6th issues are concerned, this Court has already found that the Defendants were injuncted from using the impugned mark “NITCO” fromm December 2009 onwards. Thereafter, the Defendants have been using the mark “SITCO”. The Plaintiff had also vacated from the subject premises and ultimately, they have closed down all their showrooms. There are no sufficient materials to determine the damages suffered by the Plaintiff. Therefore, on an overall consideration of the facts and circumstances of the case, this Court is not inclined to grant payment of any damages by the Defendants to the Plaintiffs. However, considering the conduct of the Defendants and the culpability on their part, this Court will sufficiently compensate the Plaintiff by imposing an exemplary cost against the Defendants. Hence, there is no requirement to award damages separately. Considering the facts and circumstances of the case, there is also no requirement to direct for rendition of accounts by the Defendants. The 5th and 6th issues are 25/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 answered accordingly.
CONCLUSION:
28. The conspectus of the above discussion leads to the passing of the judgement and decree in favour of the Plaintiff :
(a) For a permanent injunction restraining the Defendants their partners, servants, agents, men, or anyone claiming through them from marketing, distributing, offering, advertising or using the Mark “NITCO” in any form or variation in English Language and or any other Vernacular Language with or without the tagline –“The Luggage Expert” or similar sounding names or any other mark deceptively similar to the Plaintiffs mark “WITCO” with identical colour scheme, get up and layout in the course of their Trade/services and passing off goods or services or enabling others to pass off the goods or services as the goods of the Plaintiff or as services provided;
(b) For a mandatory injunction directing the Defendants to deliver to the Plaintiff all the business materials, goods, invoices, bills, receipts, books of accounts, cartons, advertisement materials, hoardings, 26/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 letter-heads, visitingcards, office stationery and all or any other materials containing/bearing the mark “NITCO” with or without the logo “The Luggage Expert" or any otherdeceptively similar mark or labels for destruction; and
(c) Directing the Defendants to pay exemplary cost of a sum of Rs.5,00,000/- [Rupees Five Lakhs only] to the Plaintiff.
29.In the result, the present suit is decreed in the above terms.
22.12.2021 Internet: Yes Index : Yes KP ..
List of Witness examined on the side of the Plaintiff:- 27/37
https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 Mr.V.P.Harris ----- PW.1 List of Witness examined on the side of the Defendant:-
Mr.Zakir Hussain - DW -1 defendant List of the Exhibits marked on the side of the Plaintiff:-
S.No. Exhibits Description of Documents
1 Ex.P-1 The photo copy of Certificate of Incorporation of
Plaintiff.
2. Ex.P-2 Thw photo copy of Registration Certificate under
Tamilnadu General Sales Tax Act dated 25/2/1991.
3. Ex.P-3 The photo copy of Registration Certificate under Central Sales Act dated 25/2/1991.
4. Ex.P-4 The Photo copy of Press coverage in Economic Times.
5. Ex.P-5 The photo copy of Estimate and Proforma Invoice of M/s.Radical towards Witco Luggage “Musical Cases TVC” dated -7/4/2005.
6 Ex.P-6 The original Bill dated -11/5/-2005 of M/s.Radical towards Witco Luggage “Musical Cases TVC” .
7. Ex.P-7 (Series) is the original Sun T.V.Telecast Certificate Screening Witco.T.V.S.for the period 16/5/2005 to 31/5/2005.
28/37
https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 8 Ex.P-8 The original Invoice dated 30/5/2005 of M/s.Rubecon Communication Ltd.towards Witco Logo Design.
9 Ex.P-9 The original Invoice dated 30/5/2005 of M/s.Rubecon Communication Ltd.towards agency Commission.
10 Ex.P-10 (Series) are the original M/s.R.K.Swamy BBDO Advertising Bill from 31/5/2008 to 31/8/2005. 11 Ex.P-11 Series are the photo copy of Witco Press Advertisement for the period 15/5/2005 to 15/2/2009.
12 Ex.P-12 Original Bill dated 7/6/2005 of M/s.Aarel Graphics towards printing of Witco Gift Voucher.
13 Ex.P-13 The photo copy of I.T.Regurns, Balance Sheet and Profit & Loss Account of Witco for assessment year 2007-2008 dated 16/10/2007.
14 Ex.P-14 The original Certificate of Registration of Trademark of WITCO.
15 Ex.P-15 The photo copy of Bangalore Times Prss coverage dated 17/5/2008.
16 Ex.P-16 The original Invoice dated 29/7/2008 of M/s.Rubecon Communication Ltd., towards cost of Designing and Developing Artwork for Advertisement.
29/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 17 Ex.P-17 The original Bill dated 4/8/2008 of M/s.Metro Imaging Witco Sign Board. 18 Ex.P-18 The original Bill dated 9/8/2008 of M/s.Bharat
Plastics towards installation of Witco Sign Board. 19 Ex.P-19 The photograph after installation of Witco Sign Board.
20 Ex.P-20 The photo copy of I.T.Returns, Balance Sheet and Profit & loss account of Witco for Assessment year 2008-2009 dated 16/10/2008.
21 Ex.P-21 The original Paper Advertisements dated 8/3/2009 and 18/4/2009 of the first defendant.
22 Ex.P-22 The office copy of Notice dated 14/3/2009 with Acknowledgement Card.
23 Ex.P-23 The original Reply Notice dated 23/3/2009. 24 Ex.P-24 The original letter dated 7/4/2009 from M/s.Rubecon Communications (P) Ltd.
25 Ex.P-25 (Series) is the photo copy of petition & Counter in R.C.O.P.No.1940 of 2007, 1941 of 2007 & 1892 of 2007.
26 Ex.P-26 The Carry bag with WITCO Trade Mark. 27 Ex.P-27 The Pamphlets fo the plaintiff Company.
30/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 28 Ex.P-28 The photographs of show room and sign board along with C.D. 29 Ex.P-29 The certified copy of judgment dated 30/11/2009 in O.S.A.Nos.307 & 308 of 2009. 30 Ex.P-30 The original Letter dated 17/12/2009 from
defendant to the plaintiff. (Ex.P.30 is marked subject to the objection raised by he learned counsel for the plaintiff).
31 Ex.P-31 The office copy of Reply dated 24/12/2009 of the plaintiff.
32 Ex.P-32 The photocopy of Order in SLP(Civil) Nos.35067 & 35068 of 2009 dated 5/1/2010.
33 Ex.P-33 The office copy of Legal notice dated 12/1/2010 issued by the Plaintiff.
34 Ex.P-34 The original Reply notice dated 16/1/2010 issued by the defendants.
31/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 35 Ex.P-35 The phtographs of the Show room.
(The counsel for the defendant has raised serious and stron objections to mark the photo copies of documents for the reasons as to U/s.63 of the evidence Act, photo copies of documents are in admissible in evidence even as secondary evidence unless either the original or certified copies or any authenticated documents are produced and compared with photocopies so as to ensure the accuracy of copies and subject to the above said objections which are based upon questions of law and levaing the same to be decided at the final stage of the case by the Hon'ble High Court of Madras, Ex.P1 to Ex.P-5, Ex.P-11, Ex.P-13, Ex.P- 15, Ex.P-25, Ex.P-32 which are photo copies are allowed to be marked subject to proof, relevance, admissibility and authenticity as enshrined under law and procedure, by following the procedures evolved by the Hon;'ble Supreme Court in a dictum laid down in 2001-(3) Sec-1 Bipin-Shantilal Panchlal Vs. State of Gujrat and another and also as per the instructions circulated based upon Orders delivered in A.No.4998/2013 in TOS No.1/2011 dated 5/11/2013 with regard tot he admissibility and relevancy of those documents at the time of recording evidence and also subject to production of the originals in due course of time.) 32/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 List of the Exhibits marked on the side of the Defendants:-
S.No. Exhibits Description of Documents
1 Ex.D-1 Copy of the Trademark Application and report of
the Trademark Register regarding plaintiff's mark is shown to the witness.
2 Ex.D-2 Copy of Trademark Applicatin and Reports of Trademark register regarding the plaintiff's Mark (Certificate No.692172).
3 Ex.D-3 Copy of Trademark Application and Reports of Trademark register regarding the Plaintiff's Mark (unrgistered) dated 28.3.2015.
4 Ex.D-4 The photocopy of deed of settlement executed between the 3rd defendant's mother and 3rd defednant vide Doc.No.2889 of 2007 dated 13.08.2007.
5 Ex.D-5 The photocopy of deed of settlement executed between the 3rd defendant's mother and 3rd defednant vide Doc.No.3771 of 2007 dated 25.08.2007.
6 Ex.D-6 The photocpy of order passed in RCOP No.1892 of 2007 dated 31.12.2008.
7 Ex.D-7 The photocpy of MOU entered between 3rd defendant with her brother Mr.K.A.Mujiburahman dated 25.02.2009.
33/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 8 Ex.D-8 The photocpy of certificate of Registration (Form D) issued by Assistant Commissioner, Amanindakarai Assessment Circle, Chennai for NITCO dated 25.02.2009.
9 Ex.D-9 The photocpy of certificate of Registration (Form B) issued by Assistant Commissioner, Amanindakarai Assessment Circle, Chennai for NITCO dated 25.02.2009.
10 Ex.D-10 The photocpy of partnership deed executed between 2nd defendant and 3rd defendant dated 25.02.2009.
11 Ex.D-11 The photocpy of Endorsement made by the
Assistant Commissioner, Amaindakarai
Assessment Circle, Chennai in the Certificate of Registration (Form D) for changing the trade name of NITCO to SITCO dated 25.02.2009.
12 Ex.D-12 The photocpy of Endorsement made by the
Assistant Commissioner, Amaindakarai
Assessment Circle, Chennai in the Certificate of Registration (Form B) for changing the trade name of NITCO to SITCO dated 25.02.2009.
13 Ex.D-13 The photocpy of the application form submitted to the Trademark Registry along with the payment receipt dated 27.02.2009.
14 Ex.D-14 The photocopy of request for correction of clerical error (Form TM 16) submitted by the defendants to the Registrar of Trademarks dated 06.10.2009.
34/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 15 Ex.D-15 The photocopy of application of Trademark
allowed by the Deputy Registrar of Trademark dated 20.11.2009.
16 Ex.D-16 The photocopy of partnership deed executed between 2nd defendant and 3rd defendant to carry out the business in the trade name of SITCO dated 09.12.2009.
17 Ex.D-17 The photocopy of Change of name and style of
business from NITCO to SITCO issued by the
Assistant Commissioner (CT) (FAC),
Amaindakarai Assessment Circle, Chennai dated 21.12.2009.
18 Ex.D-18 The photocopy of the order passed in the Contempt Petition No.506 of 2010 dated 11.01.2011.
(the learned counsel for plainitff has represent that Ex.D-4 to Ex.D-18 are photocopies and hence objected to mark the same. Hence Ex.D4 to Ex.D-18 are marked with objection, admissibility and subject to proof and relevancy).
35/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 S.No. Exhibits Description of Documents 19. Ex.D-19 The printout copy of Status of Trademark obtained by the defendants dated 28.03.2015. 20 Ex.D-20 The printout copy of Trademark Search Report
obtained from the Trademark Registry Website dated 28.03.2015.
21. Ex.D-21 The photocopy of Logo of NITCO.
N.ANAND VENKATESH, J.
36/37 https://www.mhc.tn.gov.in/judis C.S.No.372 of 2008 KP Pre-Delivery Judgment in Civil Suit No.372 of 2009 (Comm. Suit) 22.12.2021 37/37 https://www.mhc.tn.gov.in/judis