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2017 DIGILAW 1277 (KAR)

All Well Formulations v. Swathi & Co.

2017-09-13

B.VEERAPPA

body2017
JUDGMENT : This is defendant’s Miscellaneous First Appeal against the Order dated 27th April 2017 made in O.S.No.1265/2017 on the file of the XVIII Addl. City Civil and Sessions Judge, Bengaluru City, (CCH-10), allowing the application filed by the plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil Procedure, praying to restrain the defendant, its agents, servants, workers, dealers and any person claiming through or under it from infringing the plaintiff’s well established and registered trade mark/design/tin of Turky Plus Olive Oil in red or green colour tin with unique artistic work, get up and design in respect of its edible oil and passing off the product by using offending trade mark Pure Olive Oil and tin, till the disposal of the suit and further dismissing I.A.No.2 filed by the defendant under Order XXXIX Rule 4 of Code of Civil Procedure. 2. The present respondent who is the plaintiff before the Trial Court, filed suit in O.S.No. 1265/2017 against the appellant/defendant for permanent injunction restraining the defendant from using the plaintiff’s well established and registered trade mark/ copyright/ design/ TIN of Turky plus pure Olive Oil by using offending trade mark/ design/ Tin Turkiz Pure Olive Oil Plus and for mandatory injunction directing the defendant to remove identical and deceptively similar trade mark and to render accounts and costs, contending that, the plaintiff has been doing the business of manufacturing, marketing and selling of glucose powder, arrow root powder, bleachy powder, castor oil, edible oil, olive oil etc, since 2001 under several brand names of Turkiz Pure Olive Oil etc, with unique logos, writing style, appearance, colour combinations, back ground which are invented words by the plaintiff. Plaintiff also obtained licence to run the business, adopted and using the trade mark Turky Plus Pure Olive Oil with unique artistic work, get up tin etc., since November 2002. It is further stated that the plaintiff applied for registration of the trade mark, brand names with the trade mark registry and accordingly the trade mark was registered in Class 29 vide TM No.3014931 dated 26.12.2016 and trade mark registration certificate was also issued in favour of the plaintiff. 3. It is the further case of the plaintiff that during the year 2001, plaintiff started the business in olive oil under the name and style Turky Plus Pure Olive Oil in 125 ml red and green colour tin. 3. It is the further case of the plaintiff that during the year 2001, plaintiff started the business in olive oil under the name and style Turky Plus Pure Olive Oil in 125 ml red and green colour tin. The business was largely welcomed by the retail stores of same sector and having received such a huge acclamation, plaintiff decided to register the name and logo under the Trade Marks Act, Copy Right Act and Design Act. Accordingly plaintiff obtained registration under the Design Act vide Design No.2742269 for his TIN under the name and style TURKIZ PURE OLIVE OIL. 4. It is the further case of the plaintiff that he has been using the trade mark since November 2002 and earned goodwill and reputation in the market and distributing its products in the States of Kerala, Karnataka and Tamil Nadu. The plaintiff has spent extensive amount to establish and protect the goodwill and earned brand value associated with the mark such as sole right to use the mark and design, TIN. The plaintiff came to know in the market that the defendant is also using, producing, marketing and importing the same products and doing the businesses with similar logo, label, artistic work/design as that of plaintiff’s trade mark i.e., TURKIZ PURE OLIVE OIL PLUS. On comparison of both the marks, it is evident that they are identical and similar in nature in their font, style, colour combination, background, label, logo, design and TIN. The artistic work, logo, get up and TIN has been copied verbatim by the defendant in order to mislead the customers and to encash upon the goodwill and reputation earned by the plaintiff over years. Therefore, use of the similar name, font, design, artistic work, get-up by the defendant amounts to infringement of copyright and design TIN of the plaintiff. Therefore, plaintiff filed the suit. 5. In the said suit, the plaintiff also filed an application for temporary injunction under Order XXXIX Rule 1 and 2 Code of Civil Procedure, reiterating the averments made in the plaint. 6. The defendant filed objections and contended that the plaintiff has not come to the Court with clean hands and suppressed the real facts of the case. The defendant contended that the plaintiff had also filed a suit in O.S.No.6684/2016 for temporary injunction which was rejected. 6. The defendant filed objections and contended that the plaintiff has not come to the Court with clean hands and suppressed the real facts of the case. The defendant contended that the plaintiff had also filed a suit in O.S.No.6684/2016 for temporary injunction which was rejected. Suppressing the said fact, the plaintiff has filed the present suit for similar relief and therefore, the suit is not maintainable. It is further contended that the claim of the plaintiff that it is the registered proprietor of the cylindrical tin having obtained registration of the said design in the year 2000, is not correct. It was further contended that the cylindrical tin design is an obsolete design and existing on public domain since time immemorial and lacks any novelty. The defendant using the trade mark Pure Olive Oil since 2015 for the sale of olive oil which is imported from Turkey and other European countries and the defendant has acquired vast experience and established high reputation and goodwill and has also obtained registration under the Food Safety and Standards Act, as well as VAT, and defendant has designed a particular art work, design and got up for marketing olive oil. 7. It was further contended that the ‘pure olive oil’ is a common generic word and it does not qualify as a trade mark under Section 11 of the Trademarks Act. A large number of people have been selling the olive oil under the brand name ‘Pure Olive Oil’ and the trade mark ‘Turky’ is a geographical name and no one can claim monopoly in respect of the trade mark ‘Pure Olive Oil’. The various applications submitted by the plaintiff for registration of the trade mark have been objected to by the Trade Mark Registry. Therefore, he sought to dismiss the application. 8. The defendant also filed an application under Order XXXIX Rule 4 of Code of Civil Procedure to vacate the interim injunction granted in favour of the plaintiff, raising similar contentions as raised in the objection. The said application was resisted by the plaintiff by filing objections, reiterating the averments made in the plaint. 9. 8. The defendant also filed an application under Order XXXIX Rule 4 of Code of Civil Procedure to vacate the interim injunction granted in favour of the plaintiff, raising similar contentions as raised in the objection. The said application was resisted by the plaintiff by filing objections, reiterating the averments made in the plaint. 9. The Trial Court, considering both the applications and the objections filed by the learned counsel for the parties, by the impugned order dated 27.04.2017, allowed the application filed by the plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil Procedure and granted temporary injunction as prayed for, and rejected the application filed by the defendant under Order XXXIX Rule 4 of the Code of Civil Procedure. Hence the present appeal is filed by the defendant. 10. I have heard the learned counsel for the parties to the lis. 11. Sri Harikrishna S. Holla, learned counsel for the appellant/defendant contended that the impugned order passed by the Trial Court granting injunction in favour of the respondent/plaintiff is contrary to the material on record. The Trial Court failed to notice that the appellant/defendant adopted trade mark ‘Pure Olive Oil’ for marketing olive oil in the year 2005. The respondent/plaintiff adopted the same in the year 2011. Without considering the said aspect of the matter, the Trial Court granted temporary injunction in favour of the plaintiff. He further contended that the Trial Court failed to notice that the plaintiff had filed similar suit in the past which was rejected. The said fact is suppressed by the plaintiff and therefore, plaintiff has not come to the Court with clean hands. On that ground alone, the Trial Court ought to have rejected the application. He further contended that the plaintiff has been playing fraud and deceiving gullible consumers and has been selling Helianthus Annuus oil, sesamundicum oil blending it as pure olive oil. On perusal of the application filed by the plaintiff under TM No.3014931, 3014932, 2407358, it is evident that the same have been applied in class 29 of Trade Marks Act, 1999, which provides for registration of trade mark in respect of edible oil. The said aspect of the matter is not considered by the Trial Court. Therefore, he sought to set-aside the order passed by the Trial Court, by allowing the present appeal. 12. The said aspect of the matter is not considered by the Trial Court. Therefore, he sought to set-aside the order passed by the Trial Court, by allowing the present appeal. 12. Per contra, Sri G.R. Praveen Kumar, learned counsel for the plaintiff/respondent, while filing the objections, sought to justify the impugned order passed by the Trial Court and contended that the defendant has not produced any material document before the Court to show that defendant is the prior user of the trade mark ‘Turkiz’ and design of tin, the Trial Court has rightly rejected the application for vacating the interim order and therefore, the appeal is liable to be dismissed. He further contended that the defendant has adopted the trade mark in the year 2005, whereas plaintiff adopted the same in the year 2011 is false. The plaintiff has adopted and has been using the trade mark ‘Turky Plus Olive Oil’ with unique artistic work, get up, TIN and design for his brand name since November 2002. The registration details clearly indicates that Turky Plus Pure Olive Oil has class 29, TM No.3014931 registration date 26.12.2016 and Turky Plus Pure Olive Oil, class 3, TM No.3014933 is pending. Therefore, he sought to dismiss the appeal. 13. In view of the rival contentions urged by the learned counsel for the parties, the only point that arises for consideration in the present appeal is: “Whether the Trial Court is justified in allowing the application filed by the plaintiff under Order XXXIX Rule 1 and 2 of Code of Civil Procedure and dismissing the application filed by the defendant under Order XXXIX Rule 4 of the Code of Civil Procedure, in the facts and circumstances of the case?” 14. It is the specific case of the defendant in the present appeal that he is the prior user of the trade mark styled as TURKY PLUS PURE OLIVE OIL from 2005 and the plaintiff is using it from 2011 and therefore, the Trial Court should not have granted injunction in favour of the plaintiff. 15. It is the specific case of the plaintiff that he is using the trade mark since November 2002 and the defendant has adopted the said trade mark in the year 2005. The question as to who is first user of the trade mark in dispute has to be adjudicated after a fulfledged trial. 16. 15. It is the specific case of the plaintiff that he is using the trade mark since November 2002 and the defendant has adopted the said trade mark in the year 2005. The question as to who is first user of the trade mark in dispute has to be adjudicated after a fulfledged trial. 16. The Trial Court, considering the entire material on record, recorded a finding that, “even the application submitted by the plaintiff for the registration of its trademark TURKY PLUS PURE OLIVE OIL also reveals that the plaintiff has claimed prior user from 11.11.2002. But however, the fact remains that the plaintiff submitted application for registration of the mark on 23.07.2015. The defendant is admittedly carrying on business under the mark TURKIZ PURE OLIVE OIL PLUS from 2005 as per the contents of the objections filed against I.A.No.1. This admission of the defendant presupposes that the plaintiff is also the prior user of the mark TURKY PLUS PURE OLIVE OIL. The plaintiff has also produced the photograph containing the picture of the tin sold by the defendant by using the mark PURE OLIVE OIL. On comparison of this photograph with the pictures as shown in the design registration certificate of the plaintiff, it is noticed that defendant is marketing Turkiz Pure Olive Oil Plus. The registered design of the plaintiff carries the words “guaranteed best quality” which are identically used on the tin belonging to the defendant. The design, colour and appearance is almost identical with the registered design of the plaintiff. The defendant has also used the word TURKY in the beginning and PLUS in the end which is used by the plaintiff in its registered trade mark. Except to that extent, there are other similarities in the offending mark used by the defendant which are deceptive in nature”. 17. The Trial Court, further recorded a finding that, “the arguments advanced on behalf of the plaintiff will have to be upheld as the trade mark used by the defendant is deceptively similar with the registered trade mark of the plaintiff. Though it was argued on behalf of the defendant that the plaintiff had also filed similar suit and same is pending in O.S.No.6684/2016 and his application for grant of temporary injunction was also rejected by this Court. Though it was argued on behalf of the defendant that the plaintiff had also filed similar suit and same is pending in O.S.No.6684/2016 and his application for grant of temporary injunction was also rejected by this Court. No doubt, the application filed by the plaintiff in the earlier suit was dismissed, but the said suit was based on prior user of the trade mark Turky Pure Olive Oil and not for the registered trade mark of the plaintiff Turky Plus Pure Olive Oil. The said application was dismissed by relying on Section 27 of the Trade Mark Act as the suit was for the unregistered trade mark. But the instant suit is based on the registered trade mark and hence just because the plaintiff failed in the earlier litigation it cannot be held that the plaintiff is also not entitled for the relief in the present suit. The defendant is not only using the identical trade mark as well as the design of the plaintiff but also passing off its services and looking to the similarities”. 18. Therefore, the Trial Court was of the opinion that the plaintiff is entitled to the injunction as prayed for and defendant is not entitled for vacating the interim order granted. Accordingly, by the impugned order dated 27.04.2017, allowed the application filed by the plaintiff and dismissed the application filed by the defendant. 19. The impugned order passed by the Trial Court is based on the prima-facie material placed on record. Such a finding of fact recorded by the Trial Court cannot be interfered by this Court in exercise of appellate jurisdiction under Order 43 Rule 1(r) of the Code of Civil Procedure. Accordingly, the Miscellaneous First Appeal is dismissed. 20. However, it is made clear that taking into consideration the dispute between the parties in respect of trade mark TURKY PLUS PURE OLIVE OIL with unique artistic work, it is proper to direct the Trial Court to decide the suit as expeditiously as possible, within an outer limit of one year from the date of receipt of certified copy of this judgment, subject to cooperation by both the parties. 21. 21. It is also made clear that any observations made by the Trial Court while granting injunction and dismissing the application for vacation of injunction and the observations made by this Court while deciding the present appeal, shall not come in the way of either of the parties in establishing their respective rights independently, in the pending suit. The Trial Court shall proceed strictly in accordance with law and pass decree based on the oral and documentary evidence to be adduced and produced by the parties to the lis.