Madras High Court
M/S.Sri Balamurugan Modern Rice Mill vs M/S.Subbulakshmi Modern Rice Mill on 22 August, 2005
Author: Prabha Sridevan
Bench: Prabha Sridevan
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 22/08/2005
CORAM
THE HON'BLE MR.JUSTICE R.BALASUBRAMANIAN
&
THE HON'BLE MRS.JUSTICE PRABHA SRIDEVAN
C.M.P.NO.6296 of 2005
and C.M.P.No.6297 OF 2005
IN
C.M.A.NOS.1122 & 1123 OF 2005
M/s.Sri Balamurugan Modern Rice Mill
Partnership Firm represented by it's
Partner Mr.A.Mani residing at No.23,
I, Rajaji Nagar, Kallakurichi
Villupuram District ..Petitioner in both the
C.M.Ps.
-Vs-
1.M/s.Subbulakshmi Modern Rice Mill
rep. By it's Prop.M.S.Rajendran
Durugam Road, Neelamangalam Post
Kallakurichi Taluk, Villupuram District
2.R.Ambika ..Respondents in both
the C.M.Ps.
For Petitioner : Mr.K.Rajasekaran
For Respondents : Mr.A.A.Mohan
:ORDER
(Order of the Court passed by R. Balasubramanian, J.) The appellant, as the plaintiff in O.S.No.136 of 2004 on the file of the Principal District Judge, Villupuram, complained passing off of the product of the defendant as that of the plaintiff. Pending suit, he filed I.A. Nos.196 and 197 of 2004. The relief prayed for in the later I.A. is for an interim injunction restraining the defendants from passing off and the relief prayed for in the earlier I.A. is to injunct the defendants from violating the plaintiff's copyright in the device. The learned trial judge dismissed both the application on merits. Hence the two appeals. Pending appeal, the plaintiff had prayed for similar reliefs as he had prayed for pending the suit in the present applications. Heard Mr. K. Rajasekaran, learned counsel appearing for the appellant in the appeal and Mr. A.A. Mohan, learned counsel appearing for the respondents.
2. Mr.K.Rajasekaran, learned counsel appearing for the appellant/ plaintiff would submit that the plaintiff and the defendants belong to the same family; the defendants, till the end of the year 2003, was with the plaintiff and carrying on the family business, viz. dealing in rice; the second defendant's husband, who is none other than the proprietor of the first defendant, had fallen apart from the plaintiff and he started a business, dealing with an identical product, viz. rice; the plaintiff had been using the mark "GOPURAM" on the gunny bags for his product from the year 1998; the plaintiff's application for registration of the said mark is pending; the second defendant's husband, after his strained relationship with the plaintiff, started the business solely with a view to cause irreparable injury to the plaintiff; the defendants are also using an identical mark on the gunny bags for their product and having regard to the fact that the plaintiff and the defendants were together earlier in the same business, the very act of the defendant in using a similar mark for the very same product with the end users being the same, it is likely to cause confusion in the minds of the public/consumers.
3. Mr. A.A. Mohan, learned counsel appearing for the respondents/ defendants would submit that all along, there is no interim order at all against his clients restraining them from using the said mark; the word "GOPURAM" is a generic name and there are umpteen number of dealers in this State using the same name in dealing with rice either as retailers or as wholesellers; in addition to the above, there are added words to the mark used by the defendants, which catch the mind of an intending buyer and one of those added words, viz. "MSR", abbreviation being M.S.Rajendran (the name of the proprietor of the first defendant), would definitely be a distinguishing feature in the mind of the intending buyer; the other added word "PONNI" is traceable to their family deity Ponni Amman and therefore, that added word is also a distinguishing feature in the mark used by the defendants. The learned counsel would then submit that consequent to the alleged usage of the mark by his clients which admittedly started some time in January 2004, there is no reduction in the sales of the plaintiff, which is a relevant material to be taken into account while considering the case of the plaintiff at this stage. Learned counsel for the defendants relied upon a judgment of the Supreme Court reported in A.I.R. 19 65 S.C. 980 [Durga Dutt Sharma vs. N.P. Laboratories] to highlight as to what materials should enter the mind of the court while deciding the question whether to grant an injunction or not in a case of passing off. Learned counsel for the plaintiff Mr. K. Rajasekaran brought to our notice a judgment of the Supreme Court reported in II (2004) S.L.T. 627 [Midas Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia] in his favour.
4. We heard the learned counsel on either side. Before proceeding to decide these two applications, we gave the following offer to the learned counsel for the defendants :
(a) We will grant interim order as prayed and dispose the appeals with a direction to the learned Principal District Judge to dispose the suit on or before 31.10.2005; or
(b) We will grant an interim order as prayed for pending disposal of the appeal so as to enable the learned counsel for the defendants to come up with an alteration in the device.
Learned counsel for the defendants himself suggested that without granting an interim order, time may be granted to his clients to make suitable colour changes so that the public would not be deceived and the hearing in these applications can be adjourned by two weeks as such. Learned counsel for the appellant opposed the request of the learned counsel for the respondents. We have given our careful thought to the proposal given by the learned counsel for the respondents and we are not inclined to agree with the suggestion made by the learned counsel for the defendants. Having regard to the submissions made by the learned counsel on either side and bearing in mind that at this stage, we cannot express any final opinion on the contentious issue between the parties, we have proceeded to decide the case on the prima facie materials alone.
5. There is no dispute that the proprietor of the plaintiff and the proprietor of the first defendant are thickly related to each other and they were together in the same trade, viz. dealing in rice, at least till the end of 2003. Though the defendants disputed the plaintiff's claim as an anterior user of the trademark, yet, the finding is in favour of the plaintiff that he has been using it from the year 19 98. There is no dispute that the plaintiff continues to trade in rice using the same trademark and there is also no dispute that the defendants started using the said trademark only from January, 2004.
6. In the judgment of the Supreme Court relied upon by the learned counsel for the defendants, the Supreme Court held that in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. The added words in this case, according to the learned counsel for the defendants, are the words "PONNI" and "MSR". " MSR" is the proprietor's name of the first defendant and "PONNI" is predominently connected with a variety of rice called "PONNI". Therefore prima facie, we do not find support to the argument of the learned counsel for the defendants that those added words constitute distinguishing features. We leave it as it is.
7. The product involved in this case is rice. As already stated, the parties to the suit are thickly related. The proprietor of the plaintiff had married the sister of the proprietor of the first defendant. It is not possible for the public to know that the parties to the suit have fallen apart and therefore the trade of one is not connected with the other. In other words, there is a strong possibility of the end users still believing that both the businesses of the plaintiff and the defendants belong to one family. In a case of passing off, mind and intention of the person complained of passing off will give a clue to find the right answer. When that is the position which could be conceived of, then there is every possibility of an intending consumer going by the trade name "GOPURAM", which is the catchy word in the mind of every intending buyer, leading to a confusion in the mind of the public as to whose goods they are purchasing.
8. The Supreme Court, in the judgment reported in II (2004) S.L.T. 627 cited supra, had indicated that honest and concurrent usage may be a relevant material to be taken note of in declining to grant injunction. We extract hereunder paragraph Nos.6 from that judgment:
"6. In this case it is an admitted position that the respondents used to work with the appellants. The advertisements which had been issued by the appellants in the year 1991 show that atleast from that year they were using the Mark Laxman Rekha on their products. Not only that but the appellants have had a copyright in the Marks Krazy Lines and Laxman Rekha with effect from 19th of November, 1991. The copyright had been renewed on 23rd of April, 1999. A glance at the cartons used by both the parties shows that in 1992 when the respondent first started he used the Mark Laxman Rekha in cartons containing colours red, while and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the appellants."
In the case on hand, having regard to the thick relationship between the parties; the business which they were carrying on together till December 2003 and immediately thereafter when the defendants came out with a trade name "GOPURAM", though with the added words as indicated earlier, it is prima facie clear that the concept of honest and concurrent user may not be readily available at this stage, to be taken into account. Simply because a number of other persons are using the same trade name "GOPURAM" in the product, viz. rice, it would not by itself come in the way of this Court in considering the claim of the parties to the suit on its own merits. Learned counsel appearing for the defendants relied upon a judgment of the Supreme Court in the case reported in 2001 5 SCC Pg.95 (Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd.) to substantiate his argument that in a case of passing off, mere prior user, however small the sales turnover may be, may not be a ground to grant an order of injunction. The Supreme Court in that judgment held that in considering a case of either granting or not granting an order of interim injunction in a case where there is a complaint of passing off, the party complaining of such action should establish a strong prima facie case. In that case the parties to the proceeding had a common field of activity in respect of goods and trade marks sought to be used by either are identical. The Supreme Court proceeded to state that inasmuch as the areas of activity and the nature of goods dealt with or the business carried on being identical and the trade marks being of a similar nature, the only question that needs to be decided is as to who is the prior user? In deciding the controversy namely, how far the claim of prior user would have an impact, the Supreme Court went on to say that relevant materials in that regard must be placed befo re court. The Supreme Court in that case held that prior small sales of goods with the mark are not sufficient to establish priority and the real test would be to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark. The Supreme Court had also indicated that the court has to determine whether the party complained of had also honestly and concurrently used the trade mark or there are other special circumstances arising in the matter. In this case the plaintiff had exhibited before the learned District Judge his annual turnover sales amount from the year 1998 to 2004 by filing the audited balance sheet. That exhibit is Ex.A.6. Ex.A.7 is the copy of the sales bill from 1998 to 2004. The plaintiff in the plaint had given details of his annual sales turnover based on the audited balance sheet as hereunder:
------------------------------------------------------------------------------------------
Year Annual Sales in Rs.
------------------------------------------------------------------------------------------
1998 - 1999 1,62,26,653/-
1999 - 2000 2,95,77,695/-
2000 - 2001 3,19,16,376/-
2001 - 2002 3,61,06,835/-
2002 - 2003 2,79,86,970/-
2003 - 2004 3,65,28,940/-
------------------------------------------------------------------------------------------
The defendants have admitted that atleast from 1986 they have been associated with the plaintiff in the same trade. These relevant circumstances along with the other materials, which we have referred to earlier, would in our considered opinion, constitute prima facie strong materials.
9. The learned counsel on either side have produced the gunny bags used and prima facie, it appears that the defendants have adopted a similar colour scheme as that of the plaintiff. These relevant materials, in our considered opinion, have escaped the attention of the learned Principal District Judge while he refused to grant injunction. We reiterate that the plaintiff being the anterior user of the trade name is found as a fact in his favour and there is also no dispute that the plaintiff has been using the said trademark in his product all along since the year 1998. For all the reasons stated above, we find that the plaintiff has made out a prima facie case for an interim order as prayed for in both these applications. Accordingly, both these applications are ordered as prayed for.
10. Learned counsel for the defendants, after the order is passed, made a request that the order granted today by us can be kept in abeyance for a limited period of two weeks so that his client would move the Honourable Supreme Court for an appropriate relief. On the facts noted by us above, we are not inclined to keep our order in abeyance.
ab Index:Yes Internet:Yes