Madras High Court
A.Manickavel vs Battula Narasimhulu on 14 October, 2019
Author: N.Sathish Kumar
Bench: N.Sathish Kumar
C.S.No.67 of 2015
and O.A.Nos.98 to 100 of 2015
and A.No.524 of 2015
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated :14.10.2019
Coram
The Honourable Mr.Justice N.SATHISH KUMAR
C.S.No.67 of 2015
and O.A.Nos.98 to 100 of 2015
and A.No.524 of 2015
A.Manickavel
trading as
Bharathi Soap Works,
No.38, Bhavani Ellaiamman Koil Street,
Otteri, Chennai 600 012. ...Plaintiff
Versus
Battula Narasimhulu
trading as Vasavi Industries,
Plot No.817, Prashant Nagar,
Vanasthalipuram,
Hyderabad – 500 070
State of Telangana
(Formerly State of Andhra Pradesh) ...Defendant
This Civil Suit is filed under Order IV Rule 1 of the Original
Side Rules and Order VII, Rule 1 of the Code of Civil Procedure
read with Sections 27, 28, 29, 134 & 135 of the Trade marks Act,
1999 and Sections 51, 54, 55 and 62 of the Copyrights Act, 1957,
prayed (a) granting a permanent injunction, restraining the
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C.S.No.67 of 2015
and O.A.Nos.98 to 100 of 2015
and A.No.524 of 2015
defendant, by themselves, their directors, partners, legal
representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers,
retailers, advertisers or any one claiming through or under them
from infringing plaintiff's registered trademark SILVER FOAM XXX
label/pouch by manufacturing, distributing, marketing, selling,
offering for sale, advertising or in any other manner dealing in
detergent powder, detergent cake, washing powder etc., or any
other product bearing the deceptively similar trademark SUPER
FOME XL and identical package, wrapper, container, carton, label
with colour scheme, getup, layout which are similar to plaintiff's
registered trade mark SILVER FOAM XXX label/pouch in any
manner whatsoever;
(b) granting a permanent injunction, restraining the
defendant, by themselves, their directors, partners, their legal
representatives, successors in business, assigns, servants, agents,
transporters, distributors, printers, stockists, wholesalers, dealers,
retailers or anyone claiming through or under them from
committing acts of copyright infringement by making substantial
reproduction of the plaintiff's registered copyright in the artistic
work SILVER FOAM XXX LABEL by use of identical colour scheme of
red, white and yellow with blue background for their SUPER FOME
XL package/wrapper or in any manner whatsoever;
(c) granting a permanent injunction restraining the defendant
by themselves, their directors, partners, legal representatives,
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C.S.No.67 of 2015
and O.A.Nos.98 to 100 of 2015
and A.No.524 of 2015
successors in business, assigns, servants, agents, transporters,
distributors, printers, stockists, wholesalers, dealers, retailers,
advertisers or any one claiming through or under them from
committing acts of passing off and enabling others to pass off by
manufacturing, distributing, marketing, selling, offering for sale,
advertising or in any other manner dealing in detergent powder,
detergent cake, washing powder etc., or any other product bearing
the deceptively similar trademark SUPER FOME XL and identical
package, wrapper, container, carton, label with colour scheme,
getup, layout which are similar to plaintiff's trade dress & get up in
SILVER FOAM XXX package/wrapper in any manner whatsoever;
(d) the defendant be ordered to surrender to the plaintiff for
destruction all containers, pouches, prints, dies, blocks, moulds and
plates, screen prints, packing and advertising material and any
other material in their possession, bearing the mark SUPER FOME
XL which is a substantial reproduction of the plaintiff's trade dress
& get up and copyright in the artistic work SILVER FOAM XXL
package/wrapper;
(e) a preliminary decree be passed in favour of the plaintiff
directing the defendant to render account of profits made by use of
trademark SUPER FOME XL label and the identical artistic work
therein and final decree be passed in favour of the plaintiff for the
amount of profits thus found to have been made by the defendant,
after the latter have rendered accounts;
(f) the defendant be ordered to pay to the plaintiff a sum of
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C.S.No.67 of 2015
and O.A.Nos.98 to 100 of 2015
and A.No.524 of 2015
Rs.1,00,000/- as damages for their wrongful and illegal activities
by use of trademark SUPER FOME XL label and artistic work
therein;
(g) for costs of the suit.
For Plaintiff : Mr. Arun C. Mohan
For Defendant : Defendant set exparte
Vide order dated 16.09.2019
JUDGMENT
The suit has been filed for the following reliefs:
(a) granting a permanent injunction, restraining the defendant, by themselves, their directors, partners, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them from infringing plaintiff's registered trademark SILVER FOAM XXX label/pouch by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in detergent powder, detergent cake, washing powder etc., or any 4/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 other product bearing the deceptively similar trademark SUPER FOME XL and identical package, wrapper, container, carton, label with colour scheme, getup, layout which are similar to plaintiff's registered trade mark SILVER FOAM XXX label/pouch in any manner whatsoever;
(b) granting a permanent injunction, restraining the defendant, by themselves, their directors, partners, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or anyone claiming through or under them from committing acts of copyright infringement by making substantial reproduction of the plaintiff's registered copyright in the artistic work SILVER FOAM XXX LABEL by use of identical colour scheme of red, white and yellow with blue background for their SUPER FOME XL package/wrapper or in any manner whatsoever;
(c) granting a permanent injunction restraining the defendant by themselves, their directors, partners, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, 5/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 advertisers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in detergent powder, detergent cake, washing powder etc., or any other product bearing the deceptively similar trademark SUPER FOME XL and identical package, wrapper, container, carton, label with colour scheme, getup, layout which are similar to plaintiff's trade dress & get up in SILVER FOAM XXX package/wrapper in any manner whatsoever;
(d) the defendant be ordered to surrender to the plaintiff for destruction all containers, pouches, prints, dies, blocks, moulds and plates, screen prints, packing and advertising material and any other material in their possession, bearing the mark SUPER FOME XL which is a substantial reproduction of the plaintiff's trade dress & get up and copyright in the artistic work SILVER FOAM XXL package/wrapper;
(e) a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of trademark SUPER FOME XL label and the identical artistic work 6/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 therein and final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant, after the latter have rendered accounts;
(f) the defendant be ordered to pay to the plaintiff a sum of Rs.1,00,000/- as damages for their wrongful and illegal activities by use of trademark SUPER FOME XL label and artistic work therein;
(g) for costs of the suit.
2. The case of the plaintiff is that the plaintiff is a well- reputed manufacturer of superior quality detergent cakes and powder as well as dish washing cakes. The plaintiff's detergent powder and cakes, dish wash bar are sold under the trademark 'XXX'. The products marketed by the plaintiff are of high quality and have earned great reputation and goodwill in the market. During the course of business, the plaintiff adopted a unique and distinct trademark 'XXX' for detergent powders, cakes and dish wash bars in the year 1991. The plaintiff is the registered owner of copyright in the artistic works in SILVER FOAM XXX LABEL under 7/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 No.A-65424/2003 dated 09.10.2003. The plaintiff is the exclusive owner of the copyright in the artistic work in the said label. While so, the plaintiff became aware of the defendant's use of a deceptively similar mark 'XL' with identical artistic work in the wrappers for identical product viz., detergent powder. The defendant is using the same colour combination, get up and artistic lay out of the individual components for their package/wrapper as that of the plaintiff. The plaintiff in order to settle the matter amicably caused a cease and desist notice dated 21.08.2014 to the defendant in the address printed in the defendant's pouches/wrapper, calling upon the defendant to refrain from its infringing activities. The notice was returned with an endorsement “left”. The defendant is continuing to infringe the plaintiff's trademark 'XXX'. Hence the suit has been filed.
3. Despite service of suit summons on the sole defendant and his name being printed in the cause list, none appeared on behalf of him. Therefore, the sole defendant was set ex parte by this Court vide order dated 22.07.2019.
8/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015
4. On the side of the plaintiff, the Vice President of the plaintiff's Company was examined as P.W.1 and the following documents were marked as Exs.P1 to P10.
S.No Exhibit Description of Documents
s
1. P-1 Original letter of Authorisation dated 26.09.2019
2. P-2 Copy of registration certificate for the Trade mark XXX
label under No.1262724 in class – 3
3. P-3 Copy of registration certificate for the Trade mark XXX
label under No.1278973 in class – 3
4. P-4 Copy of copyright registration certification for the artistic
work SILVER FOAM XX label under No.65424/2003
5. P-5 Xerox copy of bill and invoices for sale of XXX detergent powder
6. P-6 Copy of advertisement issued by plaintiff for the XXX detergent powder in newspapers.
7. P-7 Original of Cease and Desist notice dated 21.08.2014 issued by plaintiff counsel to defendnat along with the returned cover
8. P-8 Original of Cease and Desist notice dated 17.09.2014 issued by plaintiff counsel to defendant along with the returned cover
9. P-9 Original of specimen of plaintiff's XXX detergent powder packages/wrappers.
10. P-10 Original of specimen of defendant's SUPER FOAM XL packages/wrappers.
9/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015
5. Heard the learned counsel for the plaintiff and perused the materials.
6. P.W.1 has spoken about the business reputation and goodwill gained by the plaintiff. Ex.P2 is the copy of registration certificate for the trademark 'XXX' label under No.1262724 in class
3. Ex.P3 is the copy of registration certificate for the trademark 'XXX' label under No.1278973 in class 3. Similarly the copy of copyright registration certificate for the artistic work 'SILVER FOAM XXX' label under No. A-65424/2003 has been marked as Ex.P4. Ex.P6 is the copy of the advertisement issued by plaintiff for the 'XXX' detergent powder in newspapers. The original of cease and desists notice dated 21.08.2014 and 17.09.2014 issued by the plaintiff counsel to defendant along with the returned cover have been marked as Exs.P6 and P7. Ex.P9 is the original of specimen of plaintiff's 'XXX' detergent powder packages/wrappers and Ex.P10 is the original of specimen of defendant's 'Super Fome XL' packages/wrappers.
10/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015
7. On comparison of Ex.P9, original of specimen of plaintiff's 'XXX' detergent powder package and Ex.P10, original of specimen of defendant's 'Super Fome XL' package/wrappers, it is clearly seen that the get up and label design of the defendant's product is similar to that of the plaintiff's artistic work, design and label. Evidence of PW1 clearly indicates that defendant's Company is selling the products in recent times by adopting the similar artistic work, which is found in the plaintiff's label/design and it clearly shows that the copyright of the plaintiff is also infringed by the defendant. The evidence of PW1 remains unchallenged and the documents produced by the plaintiff clearly establish the fact that the defendants are passing off their goods in the similar trade dress/trade design adopted by the plaintiff. Therefore, the case of passing off the goods by the defendant has been proved by the plaintiff. The documents produced by the plaintiff and oral evidence on the plaintiff's side prove the case of the plaintiff. Hence, the plaintiff is entitled to injunction against the defendant. 11/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015
8. Having regard to the above fact, the plaintiff clearly established the case against the defendant. Accordingly, the suit is decreed insofar as plaint prayers (a) to (c) are concerned. As far as the prayers (d) to (f) are concerned, the learned counsel for the plaintiff submitted that he is not pressing for damages. Hence, the suit is dismissed in so far as the prayers (d) to (f) are concerned.
9. In the result, the suit is decreed as indicated above with costs. Consequently, connected applications are closed.
14.10.2019 Index : Yes/No rst 12/13 http://www.judis.nic.in C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 N.SATHISH KUMAR, J., rst C.S.No.67 of 2015 and O.A.Nos.98 to 100 of 2015 and A.No.524 of 2015 14.10.2019 13/13 http://www.judis.nic.in