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2001 DIGILAW 17 (MAD)

Mars Incorporated v. Akabay Industries and Others

2001-01-04

A.RAMAMURTHI

body2001
Judgment :- The Order of the Court was as follows : The applicant/plaintiff filed this application to grant interim injunction restraining the respondents and their men from manufacturing, selling, distributing or offering for sale milk shake machines, ice slush machines, ice cream machines bearing the mark GALAXY or any mark similar thereto to pass off and enable others to pass off the respondents milk shake, ice slush, ice cream machines as and for the applicant's product by use of the trade mark GALAXY pending disposal of the suit. The case in brief is as follows : The Power of Attorney of the applicant Mars, Incorporated, a corporation organised and existing under the laws of the State of Delaware, United States of America. The applicant is a world leader in branded snack foods, petcare products, main meal foods, electronic payment systems and drinks vending. The applicant employs approximately 30, 000 persons with manufacturing facilities in more than 30 countries, including commonwealth countries. The applicant is the proprietor of the trade mark GALAXY in respect of chocolates in 1960 and extended its use to ice creams in 1990. Besides GALAXY, some of the world's renowned confectionery brands of the applicant are Mars, Snickers, M & M's, Twix and Milky Way. The applicant is an internationally renowned manufacturer and merchant 'of various types of foodstuff including non-medicated confectionery, chocolates, ice creams, etc. The trade mark GALAXY has acquired a unique reputation in the minds of the purchasing public and the trade on account of its exclusive quality, extensive use and publicity. The adoption of this mark by anyone else will be patently dishonest and mala fide. The average international sales turnover of the applicant's products sold under the trade mark GALAXY during the period 1992 to 1997 are furnished. The annual sales figures of the applicant's goods sold under the trade mark for the period between 1992 and 1995 in the Gulf and Middle East countries are also furnished separately. They extensively advertised through various medias including inter alia, newspapers, magazines, and television. Annual worldwide sales promotion figures are also separately given. The applicant's chocolate bearing the trade mark GALAXY are exported to India on a regular basis. The applicant's ice creams, milk based beverages and chocolates bearing the trade mark GALAXY are sold in the Gulf countries on an extensive scale for the last several years. Annual worldwide sales promotion figures are also separately given. The applicant's chocolate bearing the trade mark GALAXY are exported to India on a regular basis. The applicant's ice creams, milk based beverages and chocolates bearing the trade mark GALAXY are sold in the Gulf countries on an extensive scale for the last several years. There is a large expatriate population of Indians in the Gulf countries. The expatriate Indian population travels to and from Gulf countries regularly and they carry with them to India as presents or for their own consumption confectionery and milk based beverages branded GALAXY. Every year a large number of Indians also visit the countries where the applicant's GALAXY products are sold on a large scale and bring back with them the reputation and goodwill attached to the applicant's product. The applicant's products are also freely available in Chennai and other parts of India. Such products are brought to India. Such goods are brought to India and made available to the public through retail shops. The sales in India of confectionery goods by the applicant during the period November, 1996 to December, 1998 are to the tune of U.S. dollars 244, 220. The applicant has supplied GALAXY confectionery on a commercial scale to India Tourism Development Corporation Ltd. Their products are also available for sale in duty free shops of International Airports around the world particularly Dubai International Airport. Many Airlines use Dubai Airport as their hubs for flights to and from India.In November 1999, the applicant became aware of use of the mark GALAXY on milk shake, ice slush machines being manufactured and sold by the first respondent. The second respondent is the distributor of the machines branded GALAXY being manufactured by the first respondent for the entire South India. The first respondent through respondents 2 and 3 sold milk shake, ice slush machines bearing the above trade mark in the City of Chennai and a number of such machines are installed at the Pizza Corner chain of restaurants in Chennai. The third respondent is the authorised dealer/agent of respondents 1 and 2 for sale, promotion and booking orders of these articles. The third respondent is the authorised dealer/agent of respondents 1 and 2 for sale, promotion and booking orders of these articles. The applicant through Advocate issued a cease and desist notice to the first respondent calling upon them to cease and desist from using the trade mark GALAXY in respect of milk shake and ice cream making machines or any other product bearing the mark GALAXY. A reply dated 30-12-1999 was also sent by them and for which, the applicants also sent a reply dated 25-1-2000. The respondents have copied the applicant's trade mark in its entirety. They are manufacturing and selling milk shake and ice slush machines under the trade mark GALAXY. The machines are clearly branded GALAXY with a name plate affixed on the machine. The confusion is likely to be compounded considering that the applicant sells chocolates through vending machines. The manufacture and sale of milk shake/ice slush machines bearing identical trade mark GALAXY by the respondents is bound to cause confusion and deception regarding the trade origin of the respondents' goods. The class of customers and the channels of trade of the applicant and the respondents' goods bearing the trade mark GALAXY are identical. The respondents have deliberately adopted and used the trade mark GALAXY with a view to pass off or enable others to pass off as that of the applicant. The adoption and use by the respondents are dishonest and mala fide with a view to exploit and take an unfair advantage. The unauthorised use of the trade mark by the respondents is calculated to deceive the public at large. The illegal and mala fide act of the respondents is causing irreparable and incalculable harm and injury to the applicant's goodwill and reputation and such activities are liable to be restrained by an order of permanent injunction. The applicant has been ever vigilant in seeking judicial recognition and protection of the statutory and proprietary rights against infringers of the registered trade mark GALAXY and they have filed C.S. No. 435 of 1998, Suit No. 1606 of 1998 and Civil Suit No. 718 of 1999 against the persons who have infringed their right. The applicant has made out a prima facie case and unless an order of temporary injunction is granted, the applicant would suffer loss and damage which cannot be compensated in pecuniary terms. The applicant has made out a prima facie case and unless an order of temporary injunction is granted, the applicant would suffer loss and damage which cannot be compensated in pecuniary terms. The balance of convenience is also in favour of the applicant. Hence, the application.Respondents 1 to 3 filed separate counter-affidavits. They denied the various averments. The applicant is not doing any business in India. There is also no establishment for the applicant and hence, there is no business activity. The deponent to the affidavit in support of the application has no competency to file this application or suit. The Deed empowering appointment of attorney is not proper. The first respondent is a Small Scale Industry and has closed down their unit with effect from 1-9-1999. The trade mark GALAXY admittedly is not related to the goods of the applicant. Further, the word GALAXY is not a name. The registration of the said trade mark is restricted and confined to non-medicated confectionery under Clause 30. The first respondent never dealt with any non-medicated goods but only machines. There is no distinctiveness in the trade mark with reference to the goods of chocolates and ice cream. The machines that were sold by the first respondent were not similar goods. The applicant has to satisfy this Court by positive evidence that the said trade mark acquired unique reputation in the minds of purchasing public. The supplies to Indian Tourism Development Corporation has to be proved by the applicant. It is false to allege that the second respondent was the distributor of the products to the first respondent. No machine was ever delivered or sold to the second respondent at any time. The third respondent is a third party who was not connected with the business of the first respondent and he was not an authorised dealer. The notice sent by the applicant itself indicates that they have no established business house in India. In an era of wide publicity and advertisement where skill has been extensively employed to work upon the psychology of an average man and the public generally had become well acquainted with the various techniques. The machine that was manufactured by the first respondent was a different one quite distinguishable and will not fall within Clause 30. There is no evidence that any customer of the applicant would go to the respondents. The machine that was manufactured by the first respondent was a different one quite distinguishable and will not fall within Clause 30. There is no evidence that any customer of the applicant would go to the respondents. There was never an intention to appropriate. According to the applicant, there are 40 vending machines installed in UAE and nothing in India. The applicant is only attempting to set foot in India and build a monopolistic trade.The suit filed by the plaintiff is nothing but a sheer abuse of process of Court solely intended to cause inconvenience and harassment. The applicant is not the duly constituted power of attorney of Mars Incorporated. Originally, one Mrs. Brinda Mohan, wife of the learned counsel for the applicant was the power of attorney, who had filed C.S. No. 435 of 1998 against Chanda Confectioners and others. The present power of attorney is also employed as a clerk of the plaintiff's learned counsel and, as such, he is not the duly constituted person. The plaintiff never sought permission of this Court for institution of the present suit as provided under the Code. According to Rule 16 of Civil Rules of Practice where a party appears by an agent other than a pleader or applicant agents, shall before making any powers, application or act in or to the Court, file in Court the power of attorney or written authority authorising him or properly authenticated copy and other particulars. The said A. Arul Selvam is only a name lender and is trying to indulge in frivolous and vexatious litigation. He is only a tool in the hands of the plaintiff and he may not be aware of the contents of the proceedings. He has no knowledge of the trading activities of the plaintiff or their turnover either in India or abroad but has signed the pleadings on the dotted lines dictated by his Master. The second respondent is not manufacturing or dealing with the machines. He had purchased machines from the first respondent for his use and he had no intention to manufacture or market any ice cream machines in the name of GALAXY. The plaintiff has a fancy for institution of frivolous and vexatious suit. The applicant has no prima facie case and the balance of convenience is not in his favour. He had purchased machines from the first respondent for his use and he had no intention to manufacture or market any ice cream machines in the name of GALAXY. The plaintiff has a fancy for institution of frivolous and vexatious suit. The applicant has no prima facie case and the balance of convenience is not in his favour. They are reputed business people carrying on lawful business over 6 years and has built up lucrative business and has established themselves as a leading manufacturers of softy ice creams, fast foods etc. in Chennai, which is being sold without any brand name.The second respondent also never purchased any machinery from the first respondent carrying brand name GALAXY though they made few purchases of other kinds of machines. The second respondent is doing business only at Bangalore and for the purpose of maintaining a case against the first respondent, false averments are made. Except bald allegations that the second respondent is the distributor of the first respondent's products, there is no other averment. The second respondent is not dealing in any business on a line with the applicant and they have no connection with the trading activity of the applicant. They have been wrongly impleaded on baseless allegations. The applicant/plaintiff filed separate reply affidavits denying the various averments made in the counter statement filed by the respondents 1 to 3. The first respondent claims to have closed the business and in the circumstance, the order of injunction restraining him from infringing the trade mark will not affect his interest. However, if the first respondent re-establishes his business in future, it will cause the applicants great hardship. The first respondent himself agrees that he has used the trade mark GALAXY in respect of his milk shakes, ice-sluch machines used for vending such drinks and ice-creams. The respondent has not given any reason for adoption of any identical mark. If the reputation spills over into India, it is sufficient in an action for passing off. It is well established that the goods of the applicant are well known throughout the world and also in India. The opinion of a person with average intelligence and imperfect recollection is to be taken into account. Respondents 2 and 3 are distributing and selling the products of the first respondent with identical mark. It is well established that the goods of the applicant are well known throughout the world and also in India. The opinion of a person with average intelligence and imperfect recollection is to be taken into account. Respondents 2 and 3 are distributing and selling the products of the first respondent with identical mark. The second respondent has solicited for orders at Chennai within the jurisdiction of this Court in his capacity as distributor of the first respondent. The licence and permission from Municipal Corporation of Chennai obtained by the third respondent cannot in any way authorise them to use the mark GALAXY in respect of sale and distribution of these products. A Power of Attorney can be granted in favour of any person and in respect of more than one person at a time. There is no qualification prescribed by any statute regarding Power of Attorney. The Power of Attorney granted has been duly attested by a Notary Public, is certified by the Department of State in Washington DC and is legalised by the Indian consulate. The original Power of Attorney was produced before the learned Assistant Registrar, Original Side and an endorsement was made to that effect. The third respondent is well aware of the International reputation goodwill enjoyed by plaintiff's trade mark. The third respondent had admitted that he is not manufacturing milkshake machines, ice-slush machines, ice-cream machines bearing the same trade mark. Moreover, the third respondent is using the milk shake machines and other machines for manufacturing the product. They have adopted the trade mark of the applicant with a view to create a false impression among the trade and public.Heard the learned of both sides. The points that arise for consideration are :- 1) Whether the applicant has got prima facie case and the balance of convenience is in its favour ? 2) To what relief ? Points : The applicant-company is a world leader in branded snack foods, pet care products, main meal products, etc. and employing about 30, 000 persons with manufacturing facilities in more than 30 countries including Commonwealth countries. The applicant is the proprietor of the trade mark GALAXY in respect of chocolates in 1960 and extended to ice-creams in 1990. The applicant is an Internationally renowned manufacturer and merchant of various types of foodstuff including non-medicated confectionery, chocolates, ice-creams etc. and employing about 30, 000 persons with manufacturing facilities in more than 30 countries including Commonwealth countries. The applicant is the proprietor of the trade mark GALAXY in respect of chocolates in 1960 and extended to ice-creams in 1990. The applicant is an Internationally renowned manufacturer and merchant of various types of foodstuff including non-medicated confectionery, chocolates, ice-creams etc. They have acquired a unique reputation in the minds of the purchasing public and they have extensively advertised through various medias and had furnished the annual turnover also. Learned Senior Counsel for the applicant further stated that the applicant's chocolates bearing the trade mark GALAXY are exported to India on a regular basis. However, their ice-creams, milk based beverages and chocolates bearing the trade mark GALAXY are sold in the Gulf countries on an extensive scale for the last several years. Their products are freely available in Chennai and other parts of India. In November, 1999 the applicant came to know that the first respondent is manufacturing machines using a mark GALAXY on milk shake, ice-sluch machines, etc. The second respondent is the distributor of the machines for the entire South India and the third respondent had also purchased the machines and installed the same in number of places and manufacturing ice-cream by using the trade mark named GALAXY. In view of this, there is every possibility to cause confusion and deception among the purchasers. The class of customers and the channels of trade of the goods are bearing the trade mark GALAXY are identical. In short, according to the learned Senior Counsel, the respondents have deliberately adopted and used the same trade mark with a view to pass off or enable others to pass off as that of the applicant. The unauthorised use of the said trade mark is calculated to deceive the public and cause loss to the reputation and goodwill of the applicant. Unless an order of interim injunction is granted, the applicant would suffer loss and damage which cannot be compensated in terms of money.The respondents mainly contended that no valid Power of Attorney was given to the deponent of the affidavit and he is only a clerk of the learned Counsel for the plaintiff. It is also stated that the applicant had no established business relating to ice-cream within the jurisdiction of this Court. It is also stated that the applicant had no established business relating to ice-cream within the jurisdiction of this Court. The entire sales turnover relates to the sales outside India and, as such, it cannot be construed as a sale within this jurisdiction. The trade mark GALAXY is a common word and it has no connection whatsoever either with the production of the chocolate or with the ice-creams. The first respondent further stated that they have stopped manufacturing from 1st September, 1999 and, as such, the applicant has no cause of action to proceed further against them. Similarly, the second respondent stated that there is no averment against them and their main business is only at Bangalore and they have no connection whatsoever within the jurisdiction of this Court. So far as the third respondent is concerned, they are manufacturing ice-creams and selling the same without any brand name and under the circumstance, the applicant has no prima facie case and on the other hand, the balance of convenience is only in favour of the respondents. The applicant is bound to prove that they have got prima facie case and the balance of convenience is in their favour. The applicant as well as the respondents have filed typed set of documents. The documents filed on the side of the applicant indicate that the trade mark GALAXY has been registered in Class 30 relating to non-medicated confectionery goods. They have also filed the photographs of the respondents to show that they have got the machinery bearing the identical trade mark namely GALAXY. In fact, several advertisements have also been made by the third respondent in order to show as if the product is from GALAXY. The applicant has filed many records to show that wide publicity has been made in several magazines as well as media, so that it can be concluded that the people at large would be well aware of this trade mark. Learned Senior Counsel for the applicant further contended that as their trade mark had acquired international reputation and goodwill, the respondents are making use of the same only to deceive the public. Learned Senior Counsel for the applicant further contended that as their trade mark had acquired international reputation and goodwill, the respondents are making use of the same only to deceive the public. Even assuming that the applicants are not manufacturing any ice-creams or they have established no business within the jurisdiction of this Court, yet, on the ground of intra-border reputation, their trade mark has to be protected and the respondents should be restrained from dealing with their trade mark in any way and user of the same for passing off their goods as that of the applicant. At one point of time, the first respondent stated that he had stopped manufacturing the machines with the trade mark GALAXY as early as September 1999 and, as such, the applicant has no cause of action. If the first respondent had stopped with this, then there may not be any difficulty. The first respondent has chosen to dispute the claim of the applicant on various grounds. Similarly, the third respondent also stated that he had been manufacturing ice-creams and selling the same without any brand name, but the documents filed on the side of the applicant clearly indicate that the applicant's trade mark GALAXY is used freely to gain popularity is evidently clear.The first and foremost objection raised by the contesting respondents is that the deponent of the affidavit on behalf of the applicant, who happened to be a Power of Attorney, namely Thiru Arul Selvam has no locus standi to file this application and he may not be aware of the annual sales or the advertisement made by the plaintiff. It is vehemently stated that Thiru Arun Selvam is only a clerk of the plaintiff's learned Counsel and the residence address is also that of the applicant's learned Counsel. Learned Counsel for the third respondent also pointed out that on earlier occasions also, one Mrs. Brinda Mohan as Power of Attorney of the present plaintiff filed a suit against the third party claiming the relief of injunction. The said Mrs. Brinda Mohan is only the wife of the plaintiff's learned Counsel and on this ground, it is contended that it is only a speculative suit and the applications are filed only to harass them. Brinda Mohan as Power of Attorney of the present plaintiff filed a suit against the third party claiming the relief of injunction. The said Mrs. Brinda Mohan is only the wife of the plaintiff's learned Counsel and on this ground, it is contended that it is only a speculative suit and the applications are filed only to harass them. In the reply-affidavit filed by the applicant, it has been clearly and categorically stated that Rule 16 of Civil Rules of Practice has been duly complied with and the original Power of Attorney was also filed before the officer concerned and an endorsement also was made to that effect. In fact, the original Power of Attorney was produced before the Court in order to establish that it was validly granted. The Power of Attorney was duly attested by a Notary Public and certified by the Department of State in Washington DC, and is legalised by the Indian Consulate. There is no statutory rule that Power of Attorney should be given only to a particular class of person. The Power of Attorney can be granted to any person irrespective of his position or status in the Society. The only question that has to be considered is whether the Power of Attorney was validly given to the individual. So far as this case is concerned, the available records produced clearly indicate that a valid Power of Attorney was given. The question whether the Power of Attorney would have knowledge about the marketing activities of the plaintiff or the annual sales turnover or the amount spent towards advertisement is a matter that can be considered only at the time of trial. For the purpose of this application, it is sufficient to find out whether the Power of Attorney was granted to the concerned person in accordance with law and in my view, it was properly given.Learned Senior Counsel for the plaintiff relied on the decision reported in Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd., 1996 (16) PTC 311 : 1995 AIHC 5350) (DB) for the proposition that it is not necessary that there should be actual business in India to claim right. Though at one point of time a view was taken consistently that unless business is carried on in a particular place, there is no question of relying on reputation or goodwill and claiming any relief on that footing. Though at one point of time a view was taken consistently that unless business is carried on in a particular place, there is no question of relying on reputation or goodwill and claiming any relief on that footing. In course of time, the view has began to change. It is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. The Trade Mark Law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide. On the ground of trans-border reputation only, a decision has been taken. I am of the view that this decision is applicable to the case on hand in all fours. Learned Senior Counsel for the plaintiff also relied on N. R. Dongre v. Whirlpool Corporation, wherein it was held as follows : "A product and its trade name transcends the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinema etc., even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot be said a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. ..... Satellite Television is a major contributor or information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market." This decision also applies to the case on hand. Learned Senior Counsel also relied on Daimler Benz Aktiegesellschaft v. Hybo Hindustan, relating to the trade mark BENZ, which is associated with the name of world famous car "MERCEDES BENZ". The defendant using word BENZ and "Three pointed Human Being in a Ring on undergarments". It was held, the defendant can be restrained from using it by way of injunction.Learned Counsel for the first respondent relied on Alain Bernardin Et Compagnie v. Pavilion Properties Ltd., 1967 RPC 581 (Chancery Division) relating to passing off action and it was held "Foreign business having reputation in the U.K." for the CRAZY HOUSE SALOON - No business activities in the U.K. - Interlocutory injunction refused. He also relied on Joseph Lucas Ltd. v. Fabry Automobile Company Ltd., 1906 23 RPC 33 (Chancery Division), wherein it was held as passing off - Trade name - Lucas Goods different - Action dismissed. He also relied on M/s. Malhotra Tyre Service Co. He also relied on Joseph Lucas Ltd. v. Fabry Automobile Company Ltd., 1906 23 RPC 33 (Chancery Division), wherein it was held as passing off - Trade name - Lucas Goods different - Action dismissed. He also relied on M/s. Malhotra Tyre Service Co. v. M/s. Malhotra Tyres Private Ltd., wherein the defendant was dealing in business or sale, purchase and manufacture of tyres and tubes. Trade name adopted by defendant was similar to that of plaintiff. The plaintiff was however dealing only with business of retreading of tyres. No evidence that at any time plaintiff dealt with sale purchase and manufacture of tyres. The defendant cannot be said to be passing off his goods as goods of plaintiff. These decisions have no application to the case on hand. It is, therefore, evidently clear from the aforesaid discussion as well as the position of law that even though the product of the applicant-company is not manufactured within the jurisdiction of this Court, in view of the theory of trans-border reputation and on the basis of the decisions in N. R. Dongre's case (cited supra) as well as Haw Par Bros. International Ltd.'s case 1995 AIHC 5350) (cited supra), there is no difficulty in coming to the conclusion that the applicant has established a prima facie case. Even in respect of the balance of convenience, it is only in favour of the applicant. No doubt, the first respondent stated that he had stopped manufacturing the machineries since September 1999 and if that be so, if an order of injunction is granted, he would not be affected in any way. Similarly, the third respondent took a stand that they had been manufacturing the ice-creams and selling the same without the brand name. It is always open to them to sell the product without using the trade mark of the applicant and under the circumstance, by granting an order of interim injunction, they also would not be affected in anyway. So far as the second respondent's claim that he is not the distributor and he never acted as the agent of the first respondent within the jurisdiction of this Court, evidently no record has been filed to connect the second respondent with this case and admittedly, the second respondent is functioning only at Bangalore. So far as the second respondent's claim that he is not the distributor and he never acted as the agent of the first respondent within the jurisdiction of this Court, evidently no record has been filed to connect the second respondent with this case and admittedly, the second respondent is functioning only at Bangalore. Hence, I am of the view that the applicant is entitled to the relief of interim injunction so far as respondents 1 and 3 are concerned and the points are answered accordingly.For the reasons stated above, O.A. No. 410 of 2000 is allowed in respect of respondents 1 and 3 and interim injunction already granted is made absolute. So far as the second respondent is concerned, the application is dismissed.