Madras High Court
B.Uma Maheswari vs Gandamalla Sudarshan on 18 October, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.464 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 18.10.2019
THE HONOURABLE MR. JUSTICE N.SATHISH KUMAR
C.S.NO.464 of 2019 and
O.A.No.731, 732 of 2019
1. B.Uma Maheswari, Proprietor,
Chennais Amirta International Institute of
Hotel Management, No.7, 1st floor,
South Usman Road, Opp. T. Nagar Bus Depot,
Chennai 600 017.
Rep. by her authorized person R.Boominathan
2. Chennais Amirta International Institute of
Hotel Management Private Limited,
No.7, 1st Floor, South Usman Road,
Opp. T. Nagar Bus Depot, Chennai 600 017.
Rep. by authorised Signatory R.Boominathan ... Plaintiffs
Vs.
Gandamalla Sudarshan
Father of Gandamalla Sravan Kumar (deceased),
Thadakamalla Village, Chintham Audram,
Nalgonda District, Telengana 508 001. ... Defendant
PRAYER Civil Suit filed under Order VII Rule 1 of the Code of Civil
Procedure read with Order IV Rule 1 of the Original Side Rules of the Madras
High Court, Section 2(1)(c)(xvii) read with Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division of High
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C.S.No.464 of 2019
Courts Act, 2015 and Sections 29, 134, 135 Trade Marks Act, 1999 to pass
decree and judgment for
i) a permanent injunction restraining the defendant, unidentified
persons, unknown persons, partners, servants, agents and all other acting for
and on his behalf from communicating or making available or publishing or
disseminating or distributing, or duplicating, or sharing or displaying, or
releasing, using or showing, or uploading, or downloading, or exhibiting, or
playing, and / or defraying any contents either in print, online, offline or
orally, setting up press meet or in any other like manner including social
media websites and mobile applications on any communication devices any
contents damaging the reputation of the Trademark CHENNAIS AMIRTA or
parts thereof of the plaintiffs amounting to infringement under Section 29 of
the Trademarks Act, 1999 as referred to in paragraph 14 of the plaint and to
remove the contents which are already published in the media.
ii) a permanent injunction restraining the defendant, unidentified
persons, unknown persons, partners, servants, agents and all others acting
for and on his behalf from in any manner directly or indirectly using the
mark/name CHENNAIS AMIRTA or any mark/name similar to the plaintiffs'
trade mark/name, amounting to dilution and tarnishment of the plaintiffs
trade mark CHENNAIS AMIRTA in any manner.
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C.S.No.464 of 2019
iii) An order directing the defendant to pay preliminary damages
for a sum of Rs.3,01,000/- to the plaintiffs apart from such damages as
calculated upon accounts being rendered by the defendant and for costs.
For Plaintiffs : Mr.M.S.Bharath
For Defendant : Set exparte
JUDGEMENT
This suit has been filed for a
i) a permanent injunction restraining the defendant, unidentified persons, unknown persons, partners, servants, agents and all other acting for and on his behalf from communicating or making available or publishing or disseminating or distributing, or duplicating, or sharing or displaying, or releasing, using or showing, or uploading, or downloading, or exhibiting, or playing, and / or defraying any contents either in print, on line, off line or orally, setting up press meet or in any other like manner including social media websites and mobile applications on any communication devices any contents damaging the reputation of the Trademark CHENNAIS AMIRTA or parts thereof of the plaintiffs amounting to infringement under Section 29 of the Trademarks Act, 1999 as referred to in paragraph 14 of the plaint and to remove the contents which are already published in the media. 3/14 http://www.judis.nic.in C.S.No.464 of 2019
ii) a permanent injunction restraining the defendant, unidentified persons, unknown persons, partners, servants, agents and all others acting for and on his behalf from in any manner directly or indirectly using the mark/name CHENNAIS AMIRTA or any mark/name similar to the plaintiffs' trade mark/name, amounting to dilution and tarnishment of the plaintiffs trade mark CHENNAIS AMIRTA in any manner.
iii) An order directing the defendant to pay preliminary damages for a sum of Rs.3,01,000/- to the plaintiffs apart from such damages as calculated upon accounts being rendered by the defendant and for costs.
2. The case of the plaintiffs in nutshell is as follows. The plaintiffs obtained the registered trademark CHENNAIS AMIRTA under the registration No.2752831, 3027830 and 3027831 in class 41 respectively and the first plaintiff has exclusive right to use the trademark and she permitted the 2nd plaintiff to use her trademarks in the business.
2.1. The plaintiffs are conducting a hotel management institute in the name of CHENNAIS AMIRTA since 2014 in Chennai. The plaintiffs' institute functions at Chennai T.Nagar and OMR offering wide range of hotel management courses affiliated to different universities in India and abroad 4/14 http://www.judis.nic.in C.S.No.464 of 2019 namely Bharathidasan University, Bharathiar University, Alagappa University and Annamalai University in India and Open University Malaysia in abroad. The Institute currently holds about 5000 of student and has already placed more than 14000 students in leading restaurants in India and abroad. The plaintiff's brand is extremely well known to the consumers due to their exposure to advertisements in various media including prominent magazine, TV channels and have built up a thriving business and enormous goodwill and reputation in the CHENNAIS AMIRTA brand.
2.2 On 26.06.2019, one of the students namely Sravan Kumar was murdered by another student namely Harijana Kumar, outside the campus in Old Mahabalipuram Road, OMR branch of the plaintiff's institute. The preliminary investigation made by the police revealed that the student was killed over some love affair with the relative of the accused person.
2.3. The plaintiff out of humanity and in order to support the victims family, extended financial support of Rs.20,000/- cash and also arranged vehicle at the cost of the institute. The plaintiff also offered to return the entire fees paid by the victim.
5/14 http://www.judis.nic.in C.S.No.464 of 2019 2.4. In the last week of July 2019, the victim's father, the sole defendant in this matter along with other unidentified persons entered into the campus of the plaintiff in T.Nagar and started demanding a sum of Rs.20 Lakhs as compensation and also threatened the plaintiff by claiming that they will approach other competing University for help and will call for press meet with the intention to damage the reputation of the trademark and to tarnish the brand name.
2.5. The act of the defendant approaching other University and setting up press met clearly proves the bad intention of the defendant to tarnish the brand name of the plaintiffs and any use of plaintiff's registered trademark by the defendant either orally or in writing before any print, digital or any other kind of medial will damage the reputation of the trademark and it amounts to infringement under Section 29(8)(c) and 29(9) of the Trade Marks Act, 1999 apart from dilution of the distinctiveness of the registered trademark. The defendant continues with his offending activities to damage the reputation of the brand CHENNAIS AMIRTA. Hence the suit. 6/14 http://www.judis.nic.in C.S.No.464 of 2019
3. The defendant remained absent and was set exparte. Hence, the matter was placed before the Additional Master Court No.I for recording exparte evidence.
4. The learned Additional Master No.I has recorded the evidence of PW1 and marked Ex.P1 to Ex.P16.
5. The evidence of PW1 and the documents Ex.P1 to Ex.P16 perused. Ex.A2 is the Certificate of incorporation of the CHENNAIS AMIRTA INTERNATIONAL INSTITUTE OF HOTEL MANAGEMENT PRIVATE LIMITED. Ex.P7 to Ex.P9 are the first plaintiff's Trade Mark Registration Certificates bearing No.2752831, 3027830, 3027831 in class 41. Ex.P4 is the list of students who got placement in the campaus itself.
6. The plaintiffs filed the suit against the defendant seeking permanent injunction restraining him from damaging the reputation of the plaintiffs' trademark CHENNAIS AMIRTA, which amounts to infringement under Section 29 of the Trademarks Act. The entire cause of action alleged in the plaint is that, on 3rd week of July 2019, the defendant demanded Rs.20 Lakhs from the plaintiff by threatening them that he will approach 7/14 http://www.judis.nic.in C.S.No.464 of 2019 Osmania University and call for press meet to damage the reputation of the plaintiffs' trademark.
7. In this regard, the plaintiffs marked Ex.P13, the English Transcription of the conversation recorded in the video clipping extracted from the CCTV camara and the CD of the said video, in which, the defendant stated as follows:
" we met Osmania University student and they suggested to have a police case and a press meet, so that they will help us as concerned with whatever and however big damages are there".
The entire conversation recorded in he CCTV camera clearly shows the nature of the grievance explained by the defendant, the father of the student, who was murdered. Merely because the other university students suggested the defendant to have a police case and a press meet, it cannot be stated that the defendant has infringed the trademark of the plaintiff. The conversation only indicated the grievance of the defendant, who lost his son allegedly murdered by the other students outside the campus. 8/14 http://www.judis.nic.in C.S.No.464 of 2019
8. At this juncture, it is relevant to extract Section 29(1) of the Trademarks Act, which speaks about the infringement of the registered trade marks. The extract is as follows.
" 29. Infringement of registered trade marks.
(1) A registered trade marks is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade marks is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
The plaintiff seeks shelter under Section 29(8) and(9) of the Trademarks Act, which reads as follows.
29(8) A registered trade marks is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or (c is against the reputation of the trade mark 9/14 http://www.judis.nic.in C.S.No.464 of 2019 (9) Where the distinctive elements of a registered trademark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
Only if the defendant makes any advertisement by using the plaintiff's registered trademark and if the advertisement is detrimental to distinctive character or against the reputation of the trade mark, then only that act of the defendant would be construed as " infringement " . Therefore, mere expression of the grievances by the defendant over the death of his son, who was murdered by other students, by stating that the students suggested to have a police case and a press met, will not amount to infringement. In fact, the defendant did not make any advertisement or publication damaging the reputation of the plaintiffs' trademark.
9. It is imperative to state that as per Section 29(9) of the Trademarks Act, if the defendant has spoken using the distinctive elements of a plaintiff's registered trademark for promote the sale for which the mark is registered, then only it would be construed as infringement. 10/14 http://www.judis.nic.in C.S.No.464 of 2019
10. Therefore, after analysing the evidence and documents adduced on the side of the plaintiff, this court is of the view that the plaintiff has not made out a case for " infringement ". Mere expressing the grievance of the defendant would not come under the scope of " imitation" or " infringement " of the plaintiff's trademark. Therefore, the civil suit fails.
11. In the result, the civil suit is dismissed. No costs. The connected original applications are closed.
18.10.2019 Index:Yes/No Internet:Yes/No Speaking/non speaking order mst Plaintiff side evidence PW1 Mr.Prem Amarnath Plaintiff side exhibits Ex.P1 11.10.2019 Original Letter of Authorization given to PW1 Ex.P2 12.04.2018 Printout of Certificate of iincorporation of the 2nd plaintiff 11/14 http://www.judis.nic.in C.S.No.464 of 2019 Ex.P3 21.03.2017 Printout of Newspaper cuttings showing the job fairs 22.03.2017 Ex.P4 - Printout of list of students placed in various star hotels Ex.P5 - Printout of Awards and achievements of the plaintiffs Ex.P6 - Printout of Scholarship offered by the plaintiff Ex.P7 20.09.2018 Printout of Trademark Registration No.2752831 in class 41 Ex.P8 24.01.2019 Printout of Trademark Registration No.3027830 in class Ex.P9 24.01.2019 Printout of Trademark Registration No.2752831 in class 41 Ex.P10 29.07.2019 Printout of on line trademark search report Ex.P11 27.06.2019 Printout of newspaper report about the incident Ex.P12 27.067.2019 Copy of letter given by the defendant Ex.P13 24.07.2019 Video clipping extracted from the CCTV camera in T.Nagar campus filed in CD along with English Transcription Ex.P14 26.07.2019 Copy of the complaint given by the plaintiff Ex.P15 29.07.2019 Copy of notice issued by the plaintiff to the defendant Ex.P16 30.07.2019 Affidavit under Section 65A and B of the Evidence Act.
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