Madras High Court
The Stream Of Administration Of Justice ... vs Navaratna Pharmaceutical ...
Author: K.B.K.Vasuki
Bench: K.B.K.Vasuki
A.Nos.1333, 1334, 1337 and 1338 of 2012 OA.Nos.137 and 139 of 2012 in CS.No.137 of 2012 K.B.K.VASUKI, J OA.Nos.137 and 139 of 2012 are filed by the plaintiff seeking protection against the defendants' act of infringement of the plaintiff's registered trade mark THIRUMALA MILK together with the device of lord Balaji along with peculiar colour scheme and get up by using the offending trademark THIRUVANNAMALA MILK together with the device of Lord Balaji along with an identical colour scheme which are identical and similar to or colourable imitation of the plaintiff's well established and registered trademark THIRUMALA Milk and against the defendant's act of passing off its products bearing the offending trade mark THIRUVANNAMALA MILK together with the device of Balaji together with identical colour scheme and get up as and for the celebrated products of the plaintiff. 2. A.Nos.1333 and 1334 of 2012 and A.Nos.1337 and 1338 of 2012 are filed by the defendant for suspending and vacating the order of interim injunction dated 7.3.12 granted by this court in the Original applications. 3.The suit is filed by the plaintiff for the reliefs of permanent injunction against the act of infringement of the plaintiff's registered trade mark and the plaintiff's registered copyright of artistic work and against the act of passing off, with further direction to be issued to the defendant to surrender the entire stock of unused offending milk sachets, bill books etc together with blocks and dyes for destruction and to render a true and faithful accounts of the profits earned by the defendant through the sale of milk under the offending trademark and to pay such profits to the plaintiff for the passing off committed by the defendant. 4.The suit is filed along with three applications viz., (i) for interim injunction against the act of infringement (ii) act of infringement of copyrighted artistic work (iii) against the act of passing off. 5.The plaint proceeds as if, the plaintiff is the proprietor of suit mentioned registered trademark with copyrighted artistic work along with peculiar colour scheme and get up and has been dealing in dairy products such as milk, ghee, curd and butter under the same trademark being used in the packets of all their products including milk which is being sold in different varieties and in different quantities and since 1998 by virtue of long, continuous and extensive user, the consuming public come to associate the said trademark with the plaintiff's milk packets and with none else. As the plaintiff established its business with reputation and good will, the plaintiff obtained registration of the trademark in Class 16 and the same has been renewed and is in force. The plaintiff's application for registration of the same trademark for goods in Class 29 is pending and the plaintiff has also obtained registration for its artistic work i.e device of Lord Balaji along with trademark Thirumala Milk under the Copyright Act. 6.Whereas, the defendant has been since January 2012 started marketing its milk products in Tamil Nadu by using identical trademark Thiruvannamala Milk along with identical color scheme and get up together with the device of lord Balaji in the plaintiff's milk sachets in respect of toned milk, FCM-full cream milk and also standardized milk, thereby copied the plaintiff's well established registered trademark only with dishonest intention to encash the reputation and goodwill built up by the plaintiff through sheer hard work. It is the further case of the plaintiff that if the defendant is allowed to do so, the consuming public would assume some trade connection between the plaintiff and the defendant and the same is likely to result in loss and hardship to the plaintiff and its business. 7.This court, on the basis of the averments raised in the plaint as well as in the affidavits filed in support of the applications and the material documents filed along with the plaint and having satisfied with prima facie case, granted ex parte order of injunction. 8.The defendant has come forward with 3 set of applications to suspend and vacate the order of interim injunction on the grounds as follows: 1.the plaintiff is guilty of suppression of material fact regarding the disclaimer of part of the trademark 2.order of injunction is obtained by playing fraud upon the court. 3.there is no statutory protection available to the disclaimed portion 4.there is difference in trade mark obtained and the trademark used by the plaintiff 5.there are dissimilarities in the rival trademarks color scheme and get up which is capable of distinguishing the origin of goods. 6.The trade name used is geographical in nature and is protected from any infringement action under section 30 of the Trade Mark Act. 9.Both the learned counsel on record, have also cited authorities in support of their respective contentions. 10.Heard the rival submissions made on both sides. 11.As already referred to, the suit reliefs as well the reliefs sought for in the original applications are in respect of the trademark THIRUMALA MILK together with the device of lord Balaji along with peculiar color scheme and get up, which is, as a whole according to the plaintiff, the registered trademark under the Trade Marks Act and the device of lord Balaji is the artistic work registered under the Copyright Act. The plaintiff has in support of his contention that the plaintiff is the company registered under the name and style of M/s.Tirumala Milk Products Private Ltd., and the trademark registered is 'THIRUMALA MILK' with the device of Lord Balaji and colour scheme and getup and regarding the nature of the products being dealt with by the plaintiff company and the period from which the trademark is being used by the plaintiff and also the extent of its business and multiplication of the same over few years, filed the following documents : - 1.copy of the incorporation certificate. 2.certificate of registration under VAT. 3.Auditor's certificate. 4.copy of trademark registration certificate along with renewal certificate. 5.Copy of trademark Application under No.1007423 in Class 29. 6.publication of the trademark application under No.1007423 in the trademark journal. 7.copy of the certificate of registration under copyright Act; and 8.specimen of the plaintiff's sachet under Thirumala milk. 12.The perusal of the copy of trademark registration certificate along with renewal certificate dated 04.03.2005 enclosed at page 18 of the typed set of papers reveals that the application for trademark registration in A.No.1007425 was made on 04.05.2001 and the registration was obtained on 04.03.2005 and the trademark registered is THIRUMALA MILK along with the device of Lord Balaji on the top of it and the registration has been renewed for further period of 10 years from 04.05.2011 as per the communication addressed by Government of India, Trade Marks Registry, Intellectual Property Building, G.S.T.Road, Guindy, Chennai-32 to one V.Veeraraghavan, Advocate who was earlier counsel on record for the plaintiff. The trade mark registered is composite mark i.e. Word THIRUMALA MILK with the device of Lord Balaji on the top of it and the registration is obtained only in respect of printed matter, articles advertisement under class 16. It is not in dispute and is also evident from the copy of the trade mark application dated 4.5.2001 enclosed at page 21 of the typed set filed by the plaintiff that the plaintiff's application No.1007423 filed for getting registration of the same trademark i.e. Composite trademark in respect of the goods falling in class 29 i.e. Milk, ghee and butter is pending since 4.5.2001. 13.Be that as it may, in the course of argument in these applications, the respondent/defendant has produced the order of disclaimer dated 14.4.2003 passed by the Assistant Registrar of Trade Marks in respect of the plaintiff's trade mark registration Application No.1007425 in class 16, in and under which, the device of Balaji is disclaimed. The learned counsel for the defendant also drew the attention of this Court to one publication made in Trade Marks journal on 4.10.2003 in respect of Application No.1007423 under class 29 to the effect that the registration of the trade mark shall give no right to the exclusive use of the device Lord Balaji. It is not out of context to say that the plaintiff has come forward with the original injunction application in O.A.No.138/2012 against infringement of plaintiff's copy righted artistic work i.e., device of Lord Balaji in the trade mark 'THIRUMALA MILK' on the ground that he is the exclusive owner of the same, by virtue of registration under Copyright Act, the copy of such registration is enclosed at page 24 of the typed set of papers. However, as the copyright in respect of which registration is obtained and the copyright of the device of Lord Balaji being adopted in the course of trade by the plaintiff are not identical, the relief claimed in O.A.No.138/2012 is not pressed and the injunction already granted in O.A.No.138/2012 is not extended. 14.Thus, the combined appreciation of the registration of trade mark of the plaintiff in class 16 and order of disclaimer and the application for registration of goods in class 29 and the publication regarding the same would go to show that the registration obtained under class 16 is only in respect of printed matter with disclaimer clause in respect of device of Lord Balaji and the application for registration of the trade mark for the products i.e. Milk, ghee and butter is still pending and here again, there is disclaimer in respect of products in class 29. It is also to be noted herein that the registration obtained for the trademark 'THIRUMALA MILK' is not in any combination of colour and without limitation of colour. However, the plaint proceeds as if the registration is obtained for the trade mark 'THIRUMALA MILK' with the device of Lord Balaji along with peculiar colour scheme and getup in respect of milk and the same is infringed by the defendant by using deceptively similar trade mark 'THIRUVANNAMALA MILK' together with identical colour scheme and get up and with identical device of Lord Balaji in the sachets used for selling their milk in the city of Chennai. 15.In order to lay emphasis on such averments, the averments raised in the plaint regarding "THIRUMALA MILK together with the device of Lord Balaji along with peculiar colour scheme and get up" are given in bold letters in the body of the plaint as well as in the relief column. As rightly pointed out by the learned counsel for the defendant, the claim made in the plaint as well as in the original applications is totally different. 16. At this juncture, it is but necessary to consider the definition of mark under section 2(m) of Trade Marks Act, which reads as follows: "2(m)- "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof." 17. It cannot be disputed that the registration is obtained only in respect of trade mark or a mark used in relation to any goods or services for the purpose of indicating or so as to indicate a connection in the course of such trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark. When admittedly, the registration of trade mark is obtained only in respect of printed matter 'THIRUMALA MILK' that too in class 16 without any identical colour scheme and get up and with disclaimer in respect of the device of Lord Balaji, the plaintiff's emphatic claim in more than one place as if the registered trade mark obtained by the plaintiff is as described in the plaint is not only amounting to misleading but is also amounting to improvement of the claim and suppression of material factor in so far as disclaimer clause is concerned. In that event, the judgment of the Delhi High court reported in ILR (2000) II DELHI 124 (Om Prakash Gupta v. Praveen Kumar and another) is squarely applicable to the facts of the present case. 18.In the case referred to above, the plaintiff filed identical suit for injunction against infringement of trade mark and copyright and passing off, besides other ancillary reliefs, in respect of its registered trade label SURAJ CHHAP. The plaintiff did not get any right as registered proprietor in respect of the label trade mark 'SURAJ' and the device of 'Sun' and the same fact was not disclosed by the plaintiff and the plaintiff by suppressing the same, obtained an interim order. When the same was brought to the notice of High court by argument through opponent, the Delhi High Court, by following the observation of the Supreme Court judgements reported in JT 1994 (7) SC 459 (Chandra Shashi v. Anil Kumar Varma, JT 1996 (7) SC 135 (Indian Bank v. M/s.Satyam Fibres (India) Private Limited and AIR 1994 SC 853 (S.P.Chengalvaraya Naidu (dead) by L.Rs v. Jagannath (dead by Lrs and others) regarding concealment of material facts or documents or otherwise making any misrepresentation in the Court and the legal consequences flow from the same and the scope of inherent power of the court and tribunal in such matters for recalling its judgement or order under section 151 CPC and about the invalidity and unenforceability of the decree obtained by playing fraud through non-disclosure of material facts and after considering the effect of disclaimer and the absence of disclaimer aspect in amended Act 1999, held at paras 16 and 17 that the plaintiff has by suppressing the fact of disclaimer, prevaricated and has tried to overreach the process of the court in an attempt to obtain exparte injunction and the suit was based on false plea of the trade mark being registered and the material document which was though filed, not intended to be used in legal proceedings as was used at the time of exparte hearing of the interim injunction application and the injunction thus obtained by fraudulent means is highly derogatory without justification and is reprehensible and the same amounts to contempt of court, warranting not only recall of interim injunction already granted, but also dismissal of the suit and accordingly, while recalling the order of injunction against the infringement of plaintiff's registered trade mark, dismissed the suit itself. 19.The learned senior counsel for the defendant has sought to place identical argument regarding suppression of disclaimer order by the plaintiff. Whereas, the learned counsel for the plaintiff by relying upon Delhi High court judgement reported in MANU/DE/0119/2010 (Kishore Kumar v. L.Chuni Lal Kidarnath and another) would argue that grant of injunction is necessary if it prima facie appears that the adoption of the mark was itself dishonest. It is true that the Dehli High court held so by ignoring the omission on the part of the plaintiff to refer the disclaimer class in the plaint. There again, the same was brought into light only in the pleadings raised in the written statement and at that stage, the plaintiff sought to offer an explanation for omission. There the plaintiff also came forward with the application for amendment of pleadings. The Delhi High Court, while considering the grant of discretionary relief of injunction, was pleased to permit the plaintiff to amend the pleadings on the ground that correctness or otherwise of such a plea cannot be gone into at this stage. 20.The other authorities cited on the side of the plaintiff in this regard is (1998) 9 SCC 531 (Godfrey Phillips India Ltd. v. Girnar Food and Beverages Pvt. Ltd) wherein, the Supreme Court is of the view that disclaimer by itself could not be a ground to deny the relief to the plaintiff and the Supreme Court further observed that even on disclaimer, a passing off action lies. In my considered view, the facts dealt with by the supreme court are different from the facts of the present case for the simple reason that in the case dealt with by the Supreme court, there is no suppression of material fact about disclaimer and the effect of non-disclosure of material facts in the matter of grant of discretionary relief of injunction is not at all one of the issues raised therein. The issue decided therein is as to whether disclaimer can be a ground to deny the relief of injunction and no issue arose regarding non-disclosure of disclaimer clause. Whereas, in the Supreme Court judgement relied on by the defendant's side, the Supreme Court has categorically laid down that the concealment of material facts or documents or otherwise making any misrepresentation in the Court will be viewed very seriously by the Courts. For better appreciation, paras 1, 2 and 8 of the Supreme court judgment reported in JT 1994 (7) SC 459 as extracted in the judgement of the Delhi High court reported in ILR (2000) II DELHI 124 is reproduced herein: 1.The stream of administration of justice has to remain unpolluted so that purity of court's atmosphere may give vitality to all the organs of the State. Polluters of judicial firmament are, therefore required to be well taken care of to maintain the sublimity of court's environment; so also to enable it to administer justice fairly and to the satisfaction of all concerned. 2.Anyone who takes recourse to fraud, deflects the course of judicial proceedings; or if anything is done with oblique motive, the same interferes with the administration of justice. Such persons are required to be properly dealt with, not only to punish them for the wrong one, but also to deter others from indulging in similar acts which shake the faith of people in th system of administration of justice. 8.To enable the courts to ward off unjustified interference in their working, those who indulge in immoral acts like perjury, pre-verication and motivated falsehoods have to be appropriately dealt with, without which it would not be possible for any court to administer justice in the true sense and to the satisfaction of those who approach it in the hope that truth would ultimately prevail. People would have faith in courts when they would find that satyamev javate (truth alone triumphs) is an achievable aim there; or yatro dharmasto jaya (it is virtue which ends in victory) is not only inscribed in emblem but really happens in the portals of courts. 21.It may be true that in this case, the adoption of the trade mark for the products sold by the plaintiff is from 1998 and the applications for registration of printed matters under class 16 and 29 are made on 4.5.2001 and the registration for printed matter "Thirumala Milk" was obtained on 4.3.2005 and the same was subsequently renewed for further period of 10 years from 4.5.2011. There was an order of disclaimer with regard to the device of lord Balaji. Though there is no provision of law regarding disclaimer in the new Act, Section 17 of the new Trade Marks Act introduces the concept equivalent to disclaimer clause dealing with the effect of registration of parts of a Trademark. As per Section 17(1), when a trade mark is composite one consisting of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole, whereas Section 17(2) says that when the matter forming only a part of whole of the trade mark so registered, is not the subject of a separate application by the proprietor for registration as a trade mark or which is not separately registered by the proprietor as a trade mark or contains any matter which is common to the trade or is otherwise of a non distinctive character the registration thereof shall not confer any exclusive right in such matter. 22. It may be true that the plaintiff has enclosed in the type set the copy of publication of trade mark application under No.1007423 in the trade mark journal. It is contended on the plaintiff side that as the document forms part of the plaint, the contents of the document may be read together along with plaint averments and the plaintiff cannot be held guilty of suppression of any material fact for the simple reason that disclaimer clause is referred to in the publication in trade marks journal. This Court is not inclined to accept such contention. The plaintiff has nowhere in the plaint whispered anything about disclaimer clause and the copy of the said publication is referred to in para 7 at page 5 of the plaint only in connection with pendency of the application No.1007423 for registration of trade mark in respect of goods in class 29 and the journal advertisement in respect of the same. The document is enclosed certainly not with a view to mention about the disclaimer clause, but on different context. In this case, it is not in dispute that there is no separate application for registration sought for in respect of device of Lord Balaji, as such, no statutory protection under Sections 28 and 29 of the Act is conferred in respect of the device of Lord Balaji. The averments raised in the plaint by suppressing it is hence undoubtedly misleading and misguiding in nature. 23. It is also relevant to consider at this stage that the registration of printed matter Thirumala milk which is essential and substantial part of trade mark registration is also obtained only in respect of goods in class 16. Class 16 covers mostly stationery items and one of the items covered is plastic material for packaging which is not included in other classes. It is now argued by the learned senior counsel for the plaintiff that as the product being dealt with by the plaintiff company is milk, the same is packed and carried to the general consuming public only in plastic sachets and the trade mark Thirumala milk along with other device trade description and in the peculiar colour scheme are printed only in the plastic sachets used for packing milk as such, the registration of trade mark shall be construed only in relation to the goods sold and not independently in respect of plastic sachet. 24. On the contrary, the learned counsel for the defendant would contend that the plastic material for packaging fall under class 16 is not in respect of the goods covered in other classes and the plastic packaging material referred to in class 16 is one which is manufactured by the owner and who obtained registration of the same and the registration of the printed matter obtained herein cannot be permitted to be adopted for any packaging plastic material in respect of which the plaintiff is not the registered owner. Here again, the plaintiff has not specifically stated that the trade mark registration obtained is in respect of the printed matter on plastic material used for packing the milk sold. Though it is averred in the plaint in one or two places that sachets are being used for packing and carrying the milk to consumer, the same is in different context and not in relation to registration in class 16. It is also relevant to mention, the fact that the registration of trade mark is only in respect of printed matters marked upon the sachets carrying the milk is specifically placed only in the course of argument. A reading of the plaint would only make out a case as if the registration of the trade mark is only in respect of milk. It may be true that the milk can be packed and carried to the consuming public only in receptacles of different types or different shapes, such as container, sachets, etc. but the same does not stand in the way of obtaining trademark registration in respect of the goods. As a matter of fact the application pending is only for registration of trademark in respect of goods i.e., milk, butter and ghee, as such the plaintiff is expected to have specifically averred in the plaint that the registration is only in respect of printed matters to be marked on the sachets and not in respect of the commodity i.e., milk. The very fact that the definition of mark under Section 2(m) includes packaging and classification of goods in schedule IV covers the plastic materials for packaging and milk under different classes and the Act provides for obtaining registration of packaging materials and also for the goods independently and exclusion clause contained in class 16 is to the effect that plastic materials of packaging not included in other classes would very much support the contention raised on the side of the defendant that the registration obtained for printed matters cannot be treated to be trademark registration in respect of goods. 25.The discussion held above would disclose that the case pleaded in the plaint is not supported by the documents produced herein. The plaintiff has based the suit reliefs on totally different basis than what is available to him. The combined appreciation of the conduct of the plaintiff in suppressing the material fact regarding disclaimer clause and in making false claim of registration in respect of peculiar colour scheme and get up and its failure to take steps to make necessary amendment in the plaint and that the class in which and the goods for which the registration is obtained and the goods for which it is used would not hesitate this Court to hold the plaintiff has come forward with improved claim regarding trade mark registration, which disentitles the plaintiff to claim the discretionary relief of injunction sought for herein in respect of the act of infringement is concerned. 25(a). Even otherwise, as it is now found that the Registration is only in respect of the printed matter and not in respect of goods and as admittedly the petition for registration of trade mark in respect of goods i.e., milk, butter and ghee is still ending, the trade mark has to be necessarily treated as unregistered in respect of goods, as such no infringement of trade mark arises and the plaintiff cannot succeed in their claim for infringement. 26. However, the same, in my considered view, will in no manner affect the claim of the plaintiff for similar injunction relief against passing off action. In Kerly's Law of Trade Marks and Trade Names, it is pointed out that "a claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as trade mark or otherwise, the defendant has done what is calculated to pass off his goods as those of the claimant". That is why, the learned single judge of our High court in the judgment reported in 2011-4-LW-55 (M/s.Aravind Laboratories v. Modicare) held that "claim in passing off is generally added as a second string to actions for infringements" and therefore, the learned single Judge having negatived the relief against the act of infringement proceeded to test the claim of passing off separately. 27. That being the legal position, though this court in the foregoing paragraph held that the plaintiff cannot succeed in their claim against infringement for suppression of material fact of disclaimer clause and failure to plead specific case and on the ground of non-registration of trade mark in respect of the commodity, the plaintiff can still maintain an action against passing off, as held by the Hon'ble Supreme Court in 1998 (9) SCC 531 in Godfrey Phillips India Ltd v. Girnar Food and Beverages Pvt. Limited. 28.Here again, it is contended by the learned counsel for the defendant that as the injunction sought for in respect of passing off action is on the ground that the plaintiff is the proprietor of the registered trade mark Thirumala milk with the device of Lord Balaji with peculiar colour scheme and get up, the question of deciding the relief for passing off which is common law remedy in respect of unregistered trade mark does not arise. such contention raised on the side of the defendant is legally untenable. The defendant cannot be permitted to raise the plea of non registration of the trade mark in different context for different claim. The defendant having been heard to say that the plaintiff is not entitled to claim the relief of injunction against infringement of trade mark on the ground of non registration, cannot be now allowed to oppose the relief against passing off action, which is in respect of unregistered trade mark and such contention is hence negatived. 29. The act of passing off is a form of tort. Goodwill, misrepresentation and damage are the three elements of the tort of passing off and the act of passing off has been equated to "unfair competition by misrepresentation". The basic underlying principle of action of passing off is that "a man is not to sell his own goods under the pretence that they are the goods of another man". The prerequisites for any successful passing off action are i.e., (i) the plaintiff's goods have acquired a reputation in the market and are known by some distinguishing feature; (ii) misrepresentation has deceived or is likely to deceive and (iii) damage - when the representation consists of the use of a name in connection with the goods that the name should have become distinctive of the plaintiff's goods, does not mean that his name should be known. But it should at least mean that the goods should be regarded as coming from a particular source known or unknown and by such misrepresentation the plaintiff is likely to suffer damage by such deception. Mere confusion which does not lead to a deception, is not sufficient and in assessing the likelihood of confusion and deception the nature of the goods or services supplied by the defendant is to be taken into account. The purpose of the law of passing off was to vindicate a claimant's exclusive right to his goodwill and to protect it against damage. The law would not allow others to use that goodwill so as to reduce blur, or diminish its exclusivity and be enabled by such misrepresentation to make use to take advantage of the claimant's reputation. 30.Once misrepresentation is established, it is reasonable to infer that customers of the goods bought them on that misrepresentation unless there is evidence to the contrary. The types of injury to goodwill may take such forms as where there is an apprehension of (a) diversion of sales (b) injurious association (c) misappropriation of business reputation (d) misappropriation of personality. They are all species of one genus i.e., unfair trading or unfair competition. They are examples of dishonest trading. 31. In (1970) 2 SCR 213 (F.Hoffmann-La Roche and Co. Ltd v. Geoffrey Manners and Co. Private Ltd), the Supreme Court quoted the observations of Lord Denning regarding the phrases "to deceive" and the "to cause confusion" which are, according to Lord Denning different acts. The difference is when you deceive a man, you tell him a lie, you make a false representation to another thereby cause him to believe a thing to be true which is false and the same need not be done knowingly or intentionally, but still he does it and so he deceives him. But, it may cause confusion without telling him any lie at all and without making any false representation to him. One may cause confusion on another by telling him the truth and the confusion created in his mind is not due to any fault of the person, who tells the truth, but because, the other person has no knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. The Division Bench of calcutta High court in Prem Nath Mayer v. Registrar of Trademarks and another reported in AIR 1972 Cal 261 is pleased to observe that "the burden of proving that trade mark is likely to deceive or cause confusion is on the person, who comes to the court". It is held by the Division Bench of the Delhi High Court in Century Traders v. Roshan Lal Duggar and Co. and others in the judgement reported in AIR 1978 Delhi 250 that "If there is a likelihood of offending trade mark invading the proprietary right, a case for injunction is made out. 32. In order to succeed an action for passing off, the plaintiff must either satisfy the classical form or extended form of passing off. In classical form, three aspects to be satisfied are (i) reputation or goodwill (ii) misrepresentation and (iii) damage. In extended form, the five factors to be satisfied are (i)a misrepresentation (ii) made by a trader in the course of trade (iii) to prospective customers of his or ultimate consumers of goods or services supplied by him (iv) which is calculated to injure the business or goodwill of another and (v) which causes actual damage to a business or goodwill of a trader by whom the action is brought (or in a quia timet action) will probably do so. The extended form formulated by Lord Diplock as referred to above was relied upon by the Supreme Court in Cadila Health Care Ltdv. Cadila Pharmaceuticals Ltd (2001 (5) SCC 73 and in Heinz Italia v. Dabur India Ltd (2007 (6) SCC 1). The Hon'ble Supreme Court has observed that "before the use of a particular mark can be appropriated, it is for the plaintiff to prove that the product that he is representing had earned a reputation in the market and that this reputation had been sought to be violated by the opposite party". 33. Before going into other material aspects referred to above, the first aspect to be seen is as to whether the rival trade marks are identical or deceptively similar and competing goods or services are also identical. The identification of essential features of the mark is in essence a question of fact to be decided based on the tests that are applied to comparison of the marks on the basis of the evidence let before the court as held by the Supreme Court in AIR 1965 SC 980 (Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories) and by the Division Bench of our High court in the judgment reported in 2011 (4) CTC 417 (Blue Hill Logistics Private Limited v. Ashok Leyland Limited and another). 34. In an action for infringement and passing off, the similarity rather than dissimilarity of the rival trade marks are to be considered. There is difference between the action of infringement and the action of passing off, as held by the Hon'ble Supreme Court in AIR 1965 SC 980 (Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories). Further in an action for infringement of trade mark, the plaintiff must make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise, and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's right is violated, whereas, 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. 35.As the mode for comparison of testing two trade marks is both by look and sound, it must be as held by the Supreme Court in 1970 (2) SCR in F.Hoffimann-La Roche & Co. Ltd. Vs. Geoffrey Manners & Co. Pvt. Ltd., compared as a whole and considered in respect of the goods to which it applied and the nature and kind of customers, who would like to buy the goods. While doing so, one cannot expect that the person dealing with the trade mark goods should be able to remember the exact details of the mark upon the goods. It is not a matter for microscopic inspection but to be taken from the general or even casual point of view of a customer. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. The Supreme Court, under similar circumstances, in the judgment reported in (1972) 1 SCC 618 (Parle Products (P) Ltd. v J.P. and Co., Mysore, has observed 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 if 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." That being the legal position, the plaintiff's claim has to be appreciated only in the light of such legal matrix. 36. Admittedly, two rival trade marks involved in the present case are 'Thirumala' and 'Thiruvannamala'. The specimen of the milk sachets being used by the plaintiff and the defendant are enclosed in the type set of papers filed by the plaintiff. The close scrutiny of the trade name, device, logo, colour scheme, manner of writing, style of representation, and trade description for different varieties of milk marketed by both the plaintiff and defendant would show that both are almost identical or deceptively similar. Both the plaintiff and the defendant do deal with same commodity i.e., milk and allied milk products and the commodity in question in the present case is milk. The milk is sold by both the plaintiff and the defendant in different varieties, such as toned milk, standard milk and full cream milk (FCM) in different quantities in plastic sachets. The trade name used by both are 'Thirumala" and "Thiruvannamala". While the trademark of the plaintiff is "Thirumala", the defendant added "vanna" between Thiru and Mala. As rightly argued by the learned counsel for the plaintiff the words "Thirumala" and Thiruvannamala" bear close resemblance that they are phonetically, visually, structurally deceptively similar and the added matter 'vanna' does in no manner alter such factual situation. In this contest, the observation of the Hon'ble Supreme Court in the judgment reported in 1969 (2) Supreme Court Cases 131 in K.R.Chinna Krishna Chettiar Vs. Shri Ambal and Co. Madras and another" is necessarily to be applied. The rival trademarks in the said case is "Andal" and "Ambal" and the Supreme Court is of the view that though there is no visual resemblance between the two marks, yet there is a close affinity of sound between the words "Ambal and Andal" and they are strikingly similar in sound. 37. It is sought to be argued herein that the names of "Thirumala" and "Thiruvannamala" are the names of two different places and while Thirumala denotes place of Lord Balaji, Thiruvannamala denotes place of Lord Siva and the customers may be well aware that the words Thirumala and Thiruvannamala represent the names of two different places of two distinct gods. Similar argument was rejected by the Supreme Court in the judgment above referred to on the ground that the non-Hindu customers or persons relating to other religious denominations and who are not god worshippers may not know the difference. This Court is also not inclined to accept such contention raised by the defendant for the simple reason that though "Thirumala" and Thiruvannamala" denotes two different places and distinct gods i.e., Lord Balaji and Lord Siva, the device used herein along with trade name "Thiruvannamala" is not Lord Siva, but Lord Balaji and the intention to imitate is hence apparent. Further the trademark printed by the plaintiff is Thirumala with device Lord Balaji on the top of it with the Tamil version of "jpUkyh ghy;"" above the device of Lord Balaji, with the logo displayed in circle having the words "Tasty Thirumala Health" on the right side of device of Lord Bajaji, whereas the defendant in his sachets used the name Thiruvannamala Milk with same device of Lord Balaji on the top and the Tamil version of "jpUtz;zhkyh ghy;" is similarly marked above the device of Lord Balaji. On the same right side, the logo is displayed in circle with words "Fresh Thiruvannamala Tasty". The trade description printed on the riverse side of the sachets is more or less the same. The colour scheme used by the plaintiff in toned milk, standardised milk and full cream milk (FCM) are red and green, blue and green, and orange and green with white background in all and the same colour combination is used by the defendant for same varieties toned milk, gold milk and full cream milk. The only difference is that the words toned milk and standard milk are displayed above Tamil version in the defendant's sachets. Thus the broad and essential features as explained above of the printed matters marked in the sachets carrying milk by both the plaintiff and the defendant undoubtedly bear striking similarity in all aspects, such as name, get up, colour scheme, logo, arrangement and manner of writing and style of presentation, and the mind of the customers of average intelligence and imperfect recollection is apt to ignore the negligible dissimilarity and to consider both to be from the same origin or to believe that there is link between plaintiff's and defendant's business as held by our High Court in PTC Suppl (2) 650 (Mad) (Bombay Vestors Vs. Crystel Knitters). As both the plaintiff and the defendant are trading in same commodity, the deceptive similarities in the printed matters used by the defendant, above referred to are such that there is every likelihood of a common man of ordinary knowledge being confused. It is also to be noted herein that there is every possibility of the milk of the plaintiff and the defendant being sold from the same counter under same roof and there are chances that common man is going to be deceived or buyers are likely to believe one that of the other. Thus the plaintiff has prima facie made out that the defendant is using the trade mark name which is phonetically, visually and structurally deceptively similar to that of the plaintiff and it amounts to making misrepresentation as if the defendant is associated with the plaintiff. 38. Few instances wherein phonetically and visually identical marks came up for consideration resulting in an order of injunction, on account of striking similarity found in rival trade marks. They are (a) 1951 -68- RPC 103 (De Cordova and others Vs. Vick Chemical Co.) [ "Vaporub" and "Karsot Vicks Vaporub"] (b) AIR 1963 SC 449 (Amritdhara Pharmacy Vs. Satya Deo Gupta) ["Amritadhara" and "Lakshmandhara"] (c) 1972 (1) SCC 618 (Parle Products (P) Ltd., Vs. J.P. and Co., Mysore) ["Gluco Biscuits" and "Clucose Buscuits"] (d) 1990 PTC 131 (Mad) (S.P.S.Sevlaraj Vs. V.Muthusamy Naicker) ["Gopal Tooth Powder" and "Ram Gopal Tooth Power"] (e) 1990 PTC 10 (Madras) (MRF Tyres Vs. Metro Tyres Limited) ["Nylogrip" and "Radial grip"] (f) 1989 PTC 127 (Delhi) (Blue Star Ltd. Vs. Sidwal Refrigeration Industries Pvt. Ltd.) ["Blue Star" and "Cool Star"] (g) PTC Supple. (2) 650 (Mad) (Bombay Vestors Vs. Crystal Knitters) ["Costal" and "Crystal"] (h) 1985 PTC 389 (Del) (Colgate Palmolive Co. Vs. Sundeep Enterprises) ["Colgate" and "Collegiate"] (i) 1997 PTC 651 (Del) (Madan Lal Arora Vs. Soni Udyog) ["Tiger Brand" and "Lion Brand"] (j)1977 PTC 573 (Del) ( Goel Pocket Books Vs. Raja Pocket Books) ["Nagputra" and " Nagraj" ) (k) 1989 PTC 54 (Mad) (DB) (kali Aertaed Water Works Vs. Rashid) ["Kali Mark" and "Sri New Kali Mark"] (l) 1998 PTC 689 (Del) (HI-Tech Foods Vs. Khanna Enterprises) ["Catch" and "Chetak"] (m) 2001 (5) SCC 95 ( Uniply Industries Ltd. Vs. Unicorn Plywood Pvt. Ltd.) ["Uniply" and "Uniboard"] (n) 2004 (3) CTC 90 (Midas Hygiene Industries (P) Ltd., Vs. Sudhir Bhatia and others) ["Laxman Rekha" and "Magic Laxman Rekha"] (o) 2006 (8) SCC 726 (Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai Patel and others) ["Ramdev" and "Ramdev Masala"] (p) 1998 PTC 151(Del) (Radhika Agro Industries Pvt. Ltd. Vs. Pawan Agro Foods Ltd.) ["Jeevan Dhara" and "Paawan Dhara"] (q) 2004 (29) PTC (Del) (Alfred Dunhill Limited Vs. R.P.S. Chawla) ["Dunhill" and "Sunhill"] (r) 2007 (34) PTC 109 (Del) (Glaxo Group Limited Vs. Manjit patel) ["Fortum" and "Nortum"] 39. In the judgment reported in (1972) 1 SCC 618 (Parle Products (P) Ltd. v J.P. and Co., Mysore), the plaintiffs are the manufactures of biscuits and they are the owners of certain registered trademarks. One of the registered trademarks is "Gluco" used on the wrapper of the biscuit packets. Another registered trade mark is a wrapper with colour scheme which set up and entire collocation of words registered under the trademarks Act. The wrapper is used in connection with the sale of their biscuits known as Parle Glucose Biscuits printed on the wrapper. The wrapper is of both colour and depicts a girl in the center carrying a pale of water and cows and hens around her on the background of a farm yard, house and trees. The defendant's wrapper contains the picture of a girl supporting with one hand a bundle of hay on her head and carrying a sickle in other hand and a bundle of feed in the other, cows and hens being in logo. The High Court found that except the similarity in the colour of the wrappers i.e., Partly yellow and partly white, the design of a girl and some words, there are more dissimilarities and the lady in the wrapper used by the plaintiff company is a pot on her hand, while in the defendant's wrapper it is a hay bundle on her head in the plaintiff's wrapper there are two calves and the defendants wrapper only one cow and upper portion of the defendant is not similar to that of the plaintiff's wrapper and they are not identical in feature and are not so similar to deceive any ordinary purchaser of the biscuits. The Supreme Court was of the view that the the High Court fell in error in finding so. 40. The supreme Court has by citing the earlier judgment of the Supreme Court in AIR 1965 SC 960 (Durga Dutt Sharma Vs. navaratna Pharmaceutical Laboratories), has observed as follow and by referring to commentaries in Karlay's law of trademarks and Trade name observed that the mode of comparison to ascertain as to whether one mark is deceptively similar to another is apparently consideration of broad and essential features of the two and it is enough if the impugned mark bears such an over all 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. It is observed by the Supreme Court in identical situation "In this case, we find that the packets are practically of the same size, the colour scheme of the two wrappers is almost the same; the design on both though not identical bears such a close resemblance that one can easily be mistaken for the other. The essential features of both are that there is a girl with one arm raised and carrying something in the other with a cow or cows near her and hens or chickens in the foreground. In the background there is a farm house with a fence. The word "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between the two writings. Anyone in our opinion who has a look at one of the packets today may easily mistake the other if shown on another day as being the same article which he had seen before. If one was not careful enough to note the peculiar features of the wrapper on the plaintiff's goods, he might easily mistake the defendants' wrapper for the plaintiffs' if shown to him some time after he had seen the plaintiffs'. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. We have therefore no doubt that the defendants' wrapper is deceptively similar to the plaintiffs." 41. The same view is applicable to the facts of the present case. In the case dealt with by the Supreme Court it is a wrapper and here it is sachets and the goods dealt with by both the plaintiff and the defendant is biscuits in the other case and milk in the present case, as such, the contention raised on the side of the defendant that two marks are distinguishable and easily identifiable by the public and there is no confusion among the public between the two marks, is factually untenable. 42. Among the surrounding circumstances to be taken into account one of considerable importance is the average intelligence and imperfect recollection a person is likely to have of a mark with which he is only vaguely acquainted. (Bombay Vestors Vs. Crystal Knitters PTC (Suppl) (2) 650 Madras). The customers are ordinary person of ordinary intelligence consisting of both educated, uneducated and illiterate and unwary customers. The privy council has in De Cordova and others Vs. Vick Chemical, (68 RPC 103) held that in most persons, the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. The court has to consider the mark as a whole, from the standpoint of a casual and not too curious or fussy consumer (unwary customer). In my considered view, the cursory look at sachets of both the plaintiff and the defendant in which the milk is being marketed as enclosed in the type set of the plaintiff would disclose their close resemblance and they are practically same size and same quantity with deceptively similar marks printed, the essential features of which are trade names Tirumala and Tiruvannamala with the device of Lord Balaji which occupy the prominent place at the top and the colour scheme, get up, background, design and the distinctive words and any buyer may easily mistake one to be the other. 43.The other factors to be considered are that the plaintiff is admittedly carrying on business from 1998 onwards and the certificate of incorporation for carrying on business under the name and style of 'Tirumala Milk Products Private Limited' relates to 1998 to 1999. It is not in serious dispute that the plaintiff has been dealing in milk and allied milk products. The web site of the applicant/plaintiff enclosed at pages 1 to 5 filed by the defendant would reveal that the complete range of milk products of different varieties in different quantities are handled by Tirumala Milk Products (P) Ltd under the names i.e, Thirumala FCM, Thirumala Toned milk, Thirumala Gold each 500 ml, Thirumala toned milk 200 ml, Thirumala Gold 1000ml and the products are all packed in sachets and other milk products like flavoured Milk and ghee in plastic tins, sweets in tetra packet basundi in plastic container, butter, ghee tetra pack, panner, curd, milk powder and butter milk in polythene sachets and also ice cream of different varieties in different receptacles in different shapes, such as cups, candy, bar, ball, tub and cone, etc. The sales turn over of the business of the plaintiff as per the particulars contained in the plaint based on auditor's certificate from 1999-2000 to 2010 to 2011 is from Rs.15,33,17,954/- to Rs.8,28,73,79,890/-. Though it is, at this juncture, contended by the learned counsel for the defendant that the sales turn over available is only in respect of entire range of products and not in respect of milk alone and in the absence of separate sales turn over particulars in respect of milk, the goodwill business and reputation of the plaintiff cannot be ascertained. Such argument is both factually and legally untenable. The reading of web site particulars of the applicant/plaintiff, produced on the side of the defendant in their type set would reveal that handling capacity of the plaintiff's main dairy plant at kadivedu is 4.0 lakhs liters of milk per day and main plant processes is 3.0 lakhs liters of milk per day in automatic sachet filling machines for supply and distribution to Chennai, Tirupati, Nellore etc. and there is continuous growth in sale of milk from 50000 liters to 350000 liters within a span of one decade. It further says that two other packing station processes are at Vellalacheruvu and Bhimadolu and they supply 2.0 lakh liters of milk to Hyderabad, warangal, Vijayawada, Elure, Guntur and Rajahmundry and one more plant is at Wadiyaram plant with capacity of 50000 liters of milk to cater to the markets of Madak, Nizambad, Adilabad and Karim Nagar Districts of A.P. The particulars as referred to in the document produced on the side of the defendant would reveal that the main business product of the plaintiff is milk in larger quantity and the same caters the needs of general public in various places within three states Karnataka, Andhra Pradesh and Chennai. It is needless to say that the plaintiff has, based on those particulars prima facie established his reputation and good will in the business of selling and marketing milk and the merits and demerits of the turn over particulars in detail can be considered at the time of trial. 44.Further, our High court has, in the judgment reported in 2011 (4) CTC 397 (Ashok Leyland Limited v. Blue Hill Logistics Pvt Ltd and another) observed that "reputation of the mark need not always be reflected by the volume of turnover alone and goodwill and reputation cannot be held to be directly proportionate to turnover or net profits earned in business and turn over is only an indication of success and success need not be necessarily be an indication of goodwill and reputation and turnover may be one of several factors that may indicate the existence of goodwill and reputation, but cannot be taken to be the only determinative factor and hence, prima facie plaintiff's trade mark appears to have reputation in India". The same judgment is confirmed by the Division Bench of our High court in the judgment reported in 2011 (4) CTC 417 (Blue Hill Logistics Private Limited v. Ashok Leyland Limited and another). 45. As far as the case of the defendant is concerned, the defendant was carrying on business in processing, packaging, supply and distribution of milk and milk products from 2000 under the name and style of "Venkateswara Milk Dairy Farms" and the area of operation was originally in the State of Andhra Pradesh. The defendant obtained trade mark registration for "Aamolyaa Milk" along with device of a cow with a particular colour scheme and get up under class 29 i.e., toned milk for sale. Subsequently, the firm was reconstituted as a Private Limited Company and incorporated on 7.3.2008 under the name and style of "S.V.Milk and Milk Products Ltd". Only thereafter, the defendant has been marketing and selling milk and milk products under various brands including disputed one viz. 'Thiruvannamala', Aruna Gold, Aamolyaa Milk etc. The defendant admittedly started sale of their product in Tamil Nadu from January 2012. The very similarity in the trade name, logo, device, get up, colour scheme, trade description, manner of writing and style of presentation and predominant place where the essential features of the trade mark are marked in both the sachets would reveal that the defendant has been adopting the deceptively similar trade mark either with deceptive dishonest intention or without any due cause. The defendant is not able to offer any explanation as to why they switched over to almost identical trade mark at subsequent stage, during 2012 which, as decided by the Hon'ble Supreme court in the judgment reported in 2004 (3) SCC 90 (Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia) indicates the dishonest intention to pass of the goods as that of the plaintiff. The nature of the unwary customers buying milk and milk products with average intelligence and imperfect recollection with no power of observation of Sherlock Holmes is to be recollected at this juncture. 46. As far as the plea of damage is concerned, the plaintiff is not bound to show the actual damage. He is also not equally bound to show that the defendant has by encasing upon the reputation and goodwill of the plaintiff earned profit in his business. It is sufficient if the plaintiff is able to make out a case that by act of misrepresentation on the part of the defendant, the plaintiff is likely to incur loss in the business, resulting in considerable reduction in monetary gain or resulting in financial loss. The discussion held above would compel this Court to hold that the plaintiff has prima facie established that he is the long, continuous and prior user of the mark and he has built up considerable goodwill and reputation in his business and the trade mark is known to be associated with the plaintiff and that the defendant has been, by using the impugned trademark bearing striking resemblance as that of the plaintiff's trademark, invading into the proprietary right and exclusive use of the plaintiff and similarities in both the trademarks are such that it is hard to differentiate between the two and the same is likely to create confusion as regards the origin of the goods in the mind of the consuming public, major part of which constitutes house wives consisting of both educated and uneducated and domestic servants mostly illiterate or at least make them to believe some trade connection between the plaintiff and the defendant, thereby the defendant appears to be trying to mislead the buyers and to take advantage of the reputation of the plaintiff and the same amounts to calculated attempt to pass off his product as that of the product of the plaintiff, as such the plaintiff's right to be exclusive user of the trade mark need to be protected. The prior user strengthen the case of the plaintiff as held by our High Court in 2006 33 PTC 687 (Financial Software System Private Limited Vs. Flextonic Software). As the conduct of the defendant in adopting the impugned trademark that too only very recently is in the foregoing paragraph, found to be with dishonest intention or without any due cause, the defendant do not deserve any protection both under law and on equity. The continuous use of the impugned trade mark by the defendant, without any intervention of the court by an order of injunction, would result in serious prejudice, irreparable loss and injury to the plaintiff which cannot be adequately compensated in terms of money. Thus the plaintiff has established the balance of convenience in their favour in granting interim injunction by restraining the defendant from using the plaintiff's trademark in the manner as sought for herein. It is to be mentioned at this stage that the defendant has been admittedly dealing with their product i.e. milk and milk products in different trade name and any order of injunction granted herein will in no way prejudice the defendant from selling his product by using any other trade name except the offending trade name. 47.In the result, the defendant's applications A.Nos.1333 and 1334 of 2012 are allowed and the plaintiff's O.A.137/2012 is dismissed. 48. In the result, A.Nos.1337 and 1338 of 2012 are dismissed and the O.A.No.139 of 2012 is ordered. Interim injunction already granted is made absolute. 30-3-2012 Index:Yes/No Internet:Yes/No rk/gcg K.B.K.VASUKI, J.
rk A.Nos.1333, 1334, 1337 and 1338 of 2012 OA.Nos.137 and 139 of 2012 in CS.No.137 of 2012 30-3-2012