Madras High Court
S. Sudhakar And Shri Lakshmi Agro Foods ... vs S.S.P. Durairaj (Firm) And Mr. ... on 3 April, 2007
Equivalent citations: MIPR2007(2)247, 2008(36)PTC150(MAD), AIR 2007 (NOC) 1402 (MAD.)
ORDER M. Jeyapaul, J.
Page 0893
1. Seeking interim injunction restraining the respondents and their agents fusing the copy right, using the trade mark and doing the act of passing Page 0894 off, the aforesaid O.A.Nos. 145, 146 and 147 of 2007 have been respectively filed. This Court was pleased to grant ad-interim injunction in absentia . of the respondents in respect of the aforesaid reliefs. The respondents have filed Application Nos. 1960, 1962 and 1964 of 2007 seeking to vacate the aforesaid ex parte order of ad-interim injunction in favour of the applicants. A.Nos.1961, 1963 and 1965 of 2007 have been filed seeking to suspend the ex parte order of interim injunction granted in favour of the applicants.
2. For the sake of brevity and also to avoid confusion in referring to the respective parties, the plaintiffs are referred as applicants and the defendants are referred as respondents.
3. The sum and substance of the case of the applicants is as follows:
The first applicant is the Managing Director of the second applicant Company and the Joint Proprietor of the trade mark 'UDHAIYAM". The applicants are the traders of all types of food and allied products such as Dhall, Atta, Rava, Maida, Salt. Rice, Spices, Fried gram, Appalam, Idly batter etc. The applicant's goods are sold under the trade mark "UDHAIYAM". The trade mark was originally commenced by the first applicant's ancestors during the year 1940. It has been registered under No. 595393B dated 24.3.1993. The trade mark of the applicant consists of the name 'UDHAIYAM' along with the mark/device/logo/artistic work of sun rays. They enjoy a market share of 90% in respect of its Dhall alone in Tamilnadu. They have established an extremely efficient supply chain, logistic and wide spread distribution network. The trade mark 'UDHAIYAM' together with the device/logo/artistic work of sun rays was honestly conceived employed and exploited by the applicant since 1940. They have invested heavily in bringing about a singular association between the said trade mark together with the device and the applicants in the minds of the large body of consuming and trading public. They have spent substantial amounts towards advertisement of their trade mark 'UDHAIYAM' along with the predominant device/logo/artistic work. The statement of turnover generated by the applicants would show that the second applicant alone has generated sales turn over of approximately Rs. 178.50 Crores for the period 1994 to 2005 under the trade mark 'UDAIYAM' and has spent a sum of approximately Rs. 92.3 lakhs for the period 1994 to 2005 towards the advertisement of the said trade mark. The trade mark of the applicants has become well known mark and commands Immense reputation in India. The respondents have recently started manufacturing and selling verieties of Dhall in both bulk packaging of 50 kgs, 100 kgs etc. and retail packing of 1 kg, 2 kgs, 5 kgs predominantly employing the device/logo/artistic work which is identical /deceptively simitar to the distinct device/logo/artistic work of the applicants. The unwary customers are deceived by seeing the device/logo/artistic work of the applicants. Using the identical device/logo/artistic work of the applicants over the packages of the respondents clearly amounts to an act of infringement as well as a tort of passing off. The applicants reputation and sales will be adversely Page 0895 affected by the reason of the respondents act of infringement and hence, the reliefs are sought for as above.
4. In the common counter affidavit, the respondents would submit that they are carrying on business in manufacturing and marketing Dhall products at Royapuram in Chennai right from the year 1959 under the name and style of 'S.S.P. Duralraj(Firm)'. In the year 1998, they adopted the label mark 'ARVEE' with the device of rising sun for their Dhall products. The letters "AR" are taken from the son of the second respondent and the letters "VEE" are taken from the name of the brother of the second respondent's son namely 'Vijay'. The adoption of the label mark along with the device of rising son is Ironest and bona fide. The respondents also filled trade mark Application No. 1031213 in Class '30' for Dhall products by claiming user from 21st January 1998. The said label mark was ordered to be advertised before acceptance of registration in the Trade Mark Journal by the order of the Assistant Registrar of Trade Mark, Chennai dated 17 6.2005. Accordingly, the said label mark ' ARVEE" was advertised in Trade Mark Journal No. 1341 of 1st April 2006. The Registration Certificate is awaited from the Mumbai Trade Mark Registry. The consumer packages label "ARVEE" is entirely different and distinctive from that of the plaintiffs label mark 'UDHAIYAM'. The first plaintiff is the son of the brother-in-law of the second respondent. The first plaintiff and the second respondent are not unknown persons but related to each other. The first plaintiff is not at all using the mark 'UDHAIYAM' which is being used only by the second plaintiffs company. The sales turn over of the respondents also runs into Crores of Rupees every year. They have also spent considerable advertisement and sales promotional expenses for promoting their Dhall products bearing the label mark 'ARVEE1 through television, radio and media. The suit is filed out of business jealousy. The device of rising sun is predominantly shown in the gunny bags of 50 kgs, 100 kgs etc. along with mark "ARVEE" but the respondents have not shown the device Sic) in the consumer packages and it is being shown as a small logo in their composite label mark 'ARVEE'. For deceptive similarity, the resemblance must be such as to be likely to deceive or cause confusion. The device of sun rays or the device of rising sun are very common to the trade of several companies. Nobody could claim exclusive right over the device of rising sun. The respondents' artist has drawn the device of rising sun entirely different from that of the applicants' artist. The applicants cannot claim exclusive right over such devices as they have not employed any label or skill to claim it as their artistic work. There is no misrepresentation on the part of the respondents to sell their goods as the goods of the applicants. Therefore, the respondents would pray that the order of ad-Interim Injunction may be vacated.
5. The point that arises for determination is whether the applicants have shown prima facie infringement of the applicants registered trade mark and copy right and tort of passing off goods.
6. Learned Counsel for the applicants would submit that admittedly the respondents have started using the device of sun rays which would amount Page 0896 to infringement of the applicants' registered trade mark and copy right. The applicants have shown that they are the prior users of the device of sun rays. The use of the device of sun rays by the respondents in respect of their Dhatt product is deceptively similar to the sun rays device of the respondents. The defence of the respondent that the device of sun rays Is common to trade is wholly misconceived. Further, it cannot also be a good defence that many other traders employ the device of rising sun. Further citing authorities pronounced by various High Courts and Hon'ble Supreme Court he would submit that the applicants have established prima facie that the respondents have infringed the applicants registered trade mark and copy rights.
7. Learned Senior counsel for the respondents would contend that the applicants are not the registered Proprietors of the trade mark 'UDHAIYAM'. The second applicant who is a different business entity cannot claim proprietorship over the composite label mark 'UDHAIYAM'. The device of sun rays is only a common device in the applicants composite label mark 'UDHAIYAM' and not an essential feature thereof. Therefore, the applicants cannot claim exclusive monopoly right over the device of sun rays. The device of sun rays is very common among the traders. The comparison of the labels as a whole would go to show that there is no similarity between the label of the applicants and the respondents. Further, the public will not be deceived or confused on seeing the label of the applicants. Therefore, the learned Senior counsel would contend that the applications filed by the applicants deserve dismissal.
8. On a perusal of the certificate of registration of trade mark produced by the applicants, it is found that the trade mark 'UDHAIYAM' with the device sun rays was registered by the first applicant S. Sudhakar along with M/s. S. Giredharan, S. Senthivel and L. Arunkumar who trade in the name and style of 'Shree Lakshmi Agro Foods'. It has been pleaded by the applicants that the first applicant is the joint Proprietor of the trade mark 'UDHAIYAM' and carries on business through the second applicant company. It has also been shown that the main object of the second applicant company is to take over the assets and liability of 'Shree Lakshmi Agro Foods' a partnership Firm carried on not only by the first applicant but also by S. Dinakarand K. Selvaraj.
9. The main suit has been filed for bare injunction by one of the joint trade mark holder, S. Sudhakar along with the company which has got the main object of taking over the business of 'Shree Lakshmi Agro Foods', a partnership firm carried on by the first applicant along with others. Any one of the joint trade mark holders can file the suit to protect the registered trade mark from the threat of infringement. It is not necessary In a suit for bare injunction that, all the trade mark holders should be arrayed as a party. Therefore, I hold that the first applicant along with the company has every right to lay this application seeking the relief of injunction.
10. It is established that the first applicant along with others jointly have got certificate of registration of trade mark 'UDHAIYAM' with the device sun rays. The applicants also have shown by filing the certificate issued by the Chartered Accountant that they had incurred huge amount in advertising the trade Page 0897 mark. Their sales turn over would show that the applicants have got a reputation amongst the public for the trade mark which has been registered. It is admitted in para 10 of the common counter affidavit filed by the first respondent "the device of rising sun is predominantly shown in gunny bags of 50 kgs, 100 kgs, etc., along with the mark "ARVEE". The device of rising sun in those packing materials are found prima facie to be deceptively similar to the device of rising sun used in the packages of the applicants. Therefore, such deceptive use will have to be injected or otherwise, the consumers will be the victim of deception. But, on a comparison of the packing materials employed by the applicants bearing the trade mark "UDHAIYAM" and the consumer packages used by the respondents bearing the mark 'ARVEE', it is found that the sun rays in the trade mark of the applicants have been projected prominently whereas the (sic) in the consumer packages, used by the respondents is found insignificant. Further, the device of sun rays registered by the applicants do not tally with the device of sun rays found in the consumer packages of the respondents. The main feature found in the trade mark of the applicants is the device sun rays whereas the mark 'ARVEE1 has been projected as a prominent one with the emblem having different type of sun rays in the background in the consumer packages of the respondents.
11. The mark found in the trade mark of the applicants is 'UDHAIYAM' whereas the mark found in the trade mark of the respondents is 'ARVEE'. Therefore, the mark found in the trade mark of the applicants and the respondents are totally different. But the applicants agitate over the device of sun rays as it is allegedly used in the consumer packages of the respondents. The Court will have to see whether the purchasers of the goods would be deceived on seeing the sun rays found in the consumer packages of the respondents.
12. The respondents have shown before the court that the device of sunrise or sun rays, is a very common device of the trade. Therefore, the applicants cannot claim exclusive monopoly over the device of sun rays. But, if the device of sun rays used- by the respondents are deceptively similar to the device of sun rays or sunrise registered by the applicants, then the court will have to interfere to protect the proprietorship of the trade mark registered by the applicants. The applicants cannot claim a sole domain over the common device of sun rays as it is not the invention of the applicants. But, the court is bound to curtail the use of sun rays resembling the trade mark of the applicants in order to avoid deception and confusion in the mind of the public. This court has already taken a decision that the use of the rising sun in the gunny bags predominantly by the respondents would create confusion in the mind of the public as it is used similarly to the device of the applicants.
13. It is found that the respondents also have advertised the trade mark with the label ARVEE in the Trade Marks Journal No. 1341 dated 1st April 2006 and so made available to the public as on 7.7.2006 as per Section 20 of the Trade marks Act, 1999. The essential features found on the trade mark of the respondents used in consumer packages are found to be totally different Page 0898 from the trade mark of the applicants. The respondents have used their trade mark in consumer packages in a different way which in the opinion of the court does not have semblance of deception of the trade mark of the applicants.
14. The learned Counsel for the applicants produced the authorities reported in (1) Kirit Kumar Girdharlal Doshi v. Wimco Limited 1998 (18) PTC 459;
(2) Chimanlal Narsaji Suhan V. Parasmal Mithalal Parmar 1997 PTC (17) (DB) 729;
(3) Rajastan Snuff Factory v. Gordhan Co. and Ors. 1872-PTC-185; and (4) Prince Rubber Industries v. K.S. Rubber Industries 1983-PTC-34 wherein it has been held that even if a different device is used deceptively similar to that of the registered trade mark, such a practice will have to be prohibited by way of issuing order of injunction. But, In this case, the trade mark used by the respondents in the consumer packages does not have the potential to generate a general recollection of the trade mark of the applicants with the device of sun rays. Therefore, the device of sun rays used by the respondents in the consumer packages is not at all similar to the sun rays found in the device of the applicants. The pictorial depiction in both the remarks are found to be totally distinctive. Prime facie, both the remark appear to be quite dissimilar. The ratio found in the aforesaid authorities would apply only in a situation where the device used by the respondents are deceptively similar to the trade mark registered by the applicants.
15. It has been held in the ratio laid down by the Honourable Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Limited that the court has to address the question whether the two marks are likely to give rise to confusion or not. In the considered opinion of this court, the trade mark used by the respondents in the consumer packages does not give rise to any scope for deception or confusion. The Honourable Supreme Court, in Parle Products (P) Ltd. v. J.P. and Co., Mysore, has held as follows:
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough of the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
In the instant case, the broad features found in the trade mark of the respondents used in the consumer packages were compared with that of the registered trade mark of the applicants. The essential features which would go to register in the mind of the public are found to be different in those trade marks.
Page 0899
16. In Cadila Health Care Limited v. Cadila Pharmaceuticals Limited (2001) SCC 73, the Honourable Supreme Court held as follows:
These observations appear to us to be contrary to the decision of this Court in Amritdhara case where it was observed that the products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons.
The mark 'UDHAIYAM' of the applicants is totally different from the mark 'ARVEE' found in the trade mark of the respondents. The trade mark used by the respondents in the consumer packages will not even deceive the gullible mass in the rural base. Therefore,, it is quite impossible to cheat the urban intelligentsia with such device in the trade mark
17. The Honourable Supreme Court, in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories . has held as follows:
When once the use by the defendant of the mark which is claimed to Infringe the plaintiffs mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has some times been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by Saying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential Page 0900 features of the plaintiffs trade mark to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole Is deceptively similar to that of the registered mark of the plaintiff.
Here, in the instant case, the sun rays which is the device in the trade mark of the applicants is admittedly used by the respondents also But, the device of the sun rays of the respondents in the consumer packages are not identical to that of the trade mark of the applicants. Of course, the device of sun rays in the gunny bags of the respondents is found to be quite similar to that of the applicants.
18. On a general perception of the trade mark in the consumer packages of the respondents and the registered trade mark of the applicants, it is found that nobody will be deceived or confused with the registered trade mark of the applicants. The offending trade mark used in the gunny bags (of 50 kgs and 100 kgs) of the respondents is found to be deceptively similar to the registered trade mark of the applicants. The applicants have established prima facie case for grant of interim injunction in respect of the use of the trade mark in the gunny bags of the respondents. If such similar device is permitted to be used by the respondents, much hardship will be caused to the applicants who have got their trade mark registered. The publication of the trade mark in the Trade Marks Journal by the respondents does not confer any right on the respondents to violate the registered trade mark of the applicants. At the same time, the trade mark used by the respondents in the consumer packages are found to be dissimilar to and quite different from that of the registered trade mark of the applicants. Therefore, the applicants have failed to establish prima facie case in respect of the trade mark used by the respondents in the consumer packages. If the respondents are restrained from using their trade mark in the consumer packages which is quite distinct from the registered trade mark used by the applicants, much hardship will be caused to the respondents. Therefore, the balance of convenience in respect thereof is only in favour of the respondents.
19. In view of the above, the ad interim injunction granted in O.A.Nos.145 to 147 of 2007 in C.S. No. 60 of 2007 stands vacated in respect of the use of the trade mark and copy rights and doing the act of passing off by the respondents in the consumer retail packages and the interim injunction granted therein in respect of the use of the trade mark and copy rights and doing the act of passing off by the respondents in the bulk gunny bags of 50 kgs, 100 kgs, etc., is made absolute. O.A.Nos.145 to 147 of 2007 in C.S. No. 60 of 2007 and Application Nos.1960, 1962 and 1964 of 2007 in O.A.Nos.145, 146 and 147 of 2007 respectively are ordered accordingly. Application Nos.1961, 1963 and 1965 of 2007 In O.A. No. 145, 146 and 147 of 2007 respectively shall stand closed.