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2021 DIGILAW 3152 (MAD)

A. D. Padmasingh Isaac v. K. Lakshmanan

2021-11-16

N.ANAND VENKATESH

body2021
JUDGMENT : N. ANAND VENKATESH, J. Prayer: Plaint under Order IV, Rule 1 of the Original Side Rules and Order VII, Rule 1 of the C.P.C. read with Sections 27(2), 29, 134 and 135 of the Trade Mark Act, 1999. The Plaintiffs, therefore, pray for a Judgment and Decree for: (a) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar label, get up and colour scheme used by the Defendant shown in Document No. 2 or in relation to chilli powder, cumin powder, fennel powder, pepper powder, rasam powder, sambar power, coriander powder, idly chilly powder, lemon rice powder, kulambu chilli powder, chicken fry mix powder, mutton masala, egg curry masala, and fish curry masala or any masala items and use the same pouches, packets of masalas and spices or any other goods or by using any other Trademark which is in any way visually, and deceptively similar to the Plaintiffs’ label marks’ label as shown in Document No. 1 or device of “AACHI” registered under No. 1595537 or in any manner infringe the Plaintiffs’ registered Trademarks under No’s 3352398, 3352399, 3352400, 3352401, 3352402, 3352403, 3352404 and 3352405. (b) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the Defendant shown in Document No. 2 or by using any other trade mark which is in any way visually or deceptively similar to the Plaintiffs’ Trademark “AACHI” label as shown in Document No. 1 or device of AACHI in relation to any masala items and use the same pouches, packets of chilli powder, cumin powder, fennel powder, pepper powder, rasam powder, sambar powder, coriander powder, idly chilly powder, lemon rice powder, kulambu chilly powder, chicken fry mix powder, mutton masala, egg curry masala, and fish curry masala, masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trademark which is in any way visually and deceptively similar to the Plaintiffs’ Trademarks as shown in Document No. 1 or AACHI in any manner pass of the Plaintiffs goods. (c) directing the Defendant to surrender to the Plaintiffs all the packing material, cartons, advertisement materials and hoardings, letterheads, visiting cards, office stationery and all other materials containing/bearing the name ‘AVM’ and packets in the Color Scheme and Get up as shown in Document No. 2 or other deceptively similar trade mark used in the pouches and packets in respect of masalas. (d) directing the Defendant to render an account of profits made by them by the use of the impugned Trademark AVM and get up as shown in Document No. 2 on the goods referred and decree the suit for the profits found to have been made by the Defendant, after the Defendant has rendered accounts. (e) directing the Defendant to pay to the Plaintiffs the costs to the suit. (f) pass further or other order, as this Hon’ble Court may deem fit and proper in the circumstances of the case and thus render justice. 1. The present suit is filed seeking for the relief of permanent injunction restraining the defendant from using pouches which are deceptively similar in respect of chilly powder, sambar powder, rasam powder, chicken 65/kabab fry mix powder, mutton masala, kulambu chilly powder, lemon rice powder, idli chilly powder cumin powder, fennel powder, coriander powder, egg curry masala, fish curry masala and pepper powder; for an order restraining the defendant, his servants agents distributors or anyone claiming through them from manufacturing selling advertising and offering for sale using the same or similar get up and colour scheme used by the defendant; a direction to the defendant to surrender the packing material cartons, advertisement materials and hoardings, letterheads, visiting cards, office stationery and all other materials containing/bearing the name AVM and packets in the colour scheme and get up; and for rendering of account of profits made by the defendant by the use of the impugned trade mark AVM and getup. 2. The case of the plaintiffs pertain to the infringement of the device of AACHI and passing off of the label marks. The trade mark AACHI was assigned in favour of the 1st plaintiff by one registered proprietary concern called the Aachi Masala Foods (P) on 30.03.2007. The plaintiffs state that in the year 1999, the trade mark AACHI was first applied for and registered in the name of the 1st plaintiff trading as Naveen products. The trade mark AACHI was assigned in favour of the 1st plaintiff by one registered proprietary concern called the Aachi Masala Foods (P) on 30.03.2007. The plaintiffs state that in the year 1999, the trade mark AACHI was first applied for and registered in the name of the 1st plaintiff trading as Naveen products. The plaintiffs also state that there are currently 178 registrations of the trade mark AACHI in various words, labels and stylized marks and the 1st plaintiff also acquired international registration (WIPO) under the Madrid protocol for the trade mark AACHI word and device under classes 29, 30 and 43 in 107 and 117 designated countries respectively. It is claimed by the plaintiffs that the label marks as a whole have been used by the plaintiffs from the year 2016 and that they have become widely famous among the trading community and the public. It is further claimed by the plaintiffs that they have been using these marks AACHI with respect to almost all the masala preparations from the commencement of their business. The plaintiffs state that from the year 2016, they introduced new label marks across their product segments and all their marks got registered in class 30, unopposed. 3. The grievance of the plaintiffs is that in November 2020, they came across the defendant’s turmeric powder, chilly powder, cumin powder, fennel powder, pepper powder, rasam powder, sambar powder, coriander powder, idli chilly powder, lemon rice powder, kulambu chilly powder, chicken fry mix powder, mutton masala, egg curry masala and fish curry masala, under the trade mark AVM, in the same colour scheme and get up of the plaintiffs’ trade mark AACHI. It is stated by the plaintiffs that they are concerned about the label adopted by the defendant which is visually and deceptively similar to the plaintiffs’ trade mark and that the defendant mark is a conscious copy of the plaintiffs’ marks which is widely famous, thereby, leading to infringement and passing off of the goods of the defendant’s for that of the plaintiff’s. The plaintiffs further state that with respect to the use of the word mark AVM, they have no objection and that their objection is only with respect to the copying of the colour scheme, get up and the label of their mark. The further grievance of the plaintiffs is that the defendant’s label consists of their trade mark AVM written prominently inside a red oval shaped bubble, which the plaintiffs claim as an imitation of the plaintiffs’ device of AACHI. The plaintiff also claimed that the colour scheme used by the defendant is copied from the plaintiffs, in all the label marks in question, and that the label is consciously copied from their label with an intention of taking undue advantage of reaping the benefits without sowing. The plaintiffs further stated that the defendant product is inferior in quality and substandard. The plaintiffs also stated that the use of the red oval device in respect of the trade mark AACHI is registered in favour of the plaintiffs’ in nearly all the 45 classes and also registered in 117 countries. The plaintiffs also state that the intricate floral print in many of their spice and spice mixtures is consciously copied by the defendants, which amounts to infringement and passing off. 4. The defendants were served with notice. They did not choose to contest the suit and they were set ex-parte. 5. The only issue that is to be considered is whether the labels of the defendant is visually and deceptively similar to that of the plaintiffs’ label marks and whether the act of the defendant is motivated by mala-fide intention to poach upon the reputation and goodwill enjoyed by the plaintiff and whether the plaintiffs are entitled for the reliefs sought for by them. 6. On 06.10.2021, the General Manager, Legal and Statutory, of the 2nd plaintiff’s company was examined as PW-1 and Exhibits P1 to P21 were marked. 7. Heard M/s. Gladys Daniel, learned counsel for the plaintiffs. This Court has carefully considered the arguments, pleadings, evidence of PW-1 and the documents relied upon by the Plaintiff. 8. This Court, by an order dated 16.12.2020 in O.A. Nos. 692 and 693 of 2020, granted an interim injunction. This order was subsequently made absolute on 15.07.2021. Hence, there is already an order of injunction acting against the defendant. 9. From a careful perusal of Exhibit 19, it is clear that the trade mark AACHI is registered and that the sole proprietor concern of the 1st plaintiff owns the intellectual property rights of the trade mark AACHI. This order was subsequently made absolute on 15.07.2021. Hence, there is already an order of injunction acting against the defendant. 9. From a careful perusal of Exhibit 19, it is clear that the trade mark AACHI is registered and that the sole proprietor concern of the 1st plaintiff owns the intellectual property rights of the trade mark AACHI. From Exhibits P 10, 11, 12 and 13, it is clear that the 1st plaintiff continues to use the trade mark AACHI through his licensees Aachi Spices and Foods Private Limited and the 2nd plaintiff. From the above mentioned Exhibit P10, it is clear that the 1st plaintiff owns the trade mark of AACHI under various labels and the 2nd plaintiff uses the same. Schedule B of Exhibit P10 lists various marks, their registered application numbers and the class in which they belong to. From the same Exhibit P10, it is very clear that the red oval shaped label trade mark is registered with the plaintiffs. 10. The 1st plaintiff possesses the international registration (WIPO) under the Madrid protocol for the trade mark AACHI word under classes 29, 30 and 43 in 107 countries. The same is clear from the document marked as Exhibit P16. The 1st plaintiff also possesses the international registration (WIPO) under the Madrid protocol, for the trade mark AACHI device under the same classes in 117 countries and the same is clear from the document marked as exhibit P16. 11. In order to decide on the question of deceptive resemblance, useful reference can be made to the judgment of the Hon’ble Supreme Court in Amritdhara Pharmacy vs. Satya Deo Gupta, AIR 1963 SC 449 . The Hon’ble Supreme Court has held that there are two important questions which require to be considered in cases of this nature. One, who are the persons for whom the resemblance is likely to deceive or confuse and two, what rules of comparison ought to be adopted in judging whether such resemblance exists. The Hon’ble Supreme Court has held that there are two important questions which require to be considered in cases of this nature. One, who are the persons for whom the resemblance is likely to deceive or confuse and two, what rules of comparison ought to be adopted in judging whether such resemblance exists. Applying this principle to the present case, it is not in dispute that both the plaintiffs’ and the defendant’s products AACHI masala and AVM are used in respect of the same description of goods, masala and spices namely chilly powder, sambar powder, rasam powder, chicken 65/kabab fry mix powder, mutton masala, kulambu chilly powder, lemon rice powder, idli chilly powder cumin powder, fennel powder, coriander powder, egg curry masala, fish curry masala and pepper powder. Both the party’s products fall under the same description, and are used in the households for cooking. These products are purchased by both literate and illiterate people. The plaintiff’s label marks as a whole, AACHI, is widely famous among the public. The word AACHI and AACHI’s products, especially their masalas, are well-known. The plaintiffs continue to enjoy a reputation over their registered trade mark from the year 1995. It is therefore clear that the persons who will be deceived or confused are the regular consumers who use these products on a daily basis. In so far as the second test is concerned, the resemblance is with respect to the colour scheme, get up and the label used by the defendant. The defendant engraves his trade name inside a red oval shaped bubble which is nothing but the imitation of the plaintiff’s device of AACHI. Therefore, there is an obvious resemblance that exists between the products of the plaintiffs and the offending products sold in the market by the defendant. 12. The Hon’ble Supreme Court in Parle Products (P) Ltd. vs. J.P. and Co. Mysore, (1972) 1 SCC 618 , while dealing with the question of deceptive similarity in the Trade and Merchandise Marks Act, 1958, held that it would amount to infringement if the impugned mark bears an overall similarity to the registered mark. The relevant paragraph from the judgment is extracted below: 9. 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. The relevant paragraph from the judgment is extracted below: 9. 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. In this case we find that the packets are practically of the same size, the color 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. 13. The red oval device - From the point of view of a man of average intelligence and imperfect recollection, the common person remembers the plaintiffs’ products AACHI with the name AACHI being placed in the product pouch, inside the red oval device. By consciously adopting the red oval device in their products, the defendant has infringed the trade mark of the plaintiffs. The colour scheme and get up by using this same colour scheme of the plaintiffs’, like red for the chili powder, green and white for the sambar powder, the blue and white for the rasam powder and so on and so forth, the defendant’s have consciously copied the colour scheme and the get up off the plaintiffs’ products. The floral pattern - It is claimed by the plaintiffs that the intricate floral pattern in many of their spices and spice mixtures were introduced in the year 2016 and the defendant has copied the same. The defendant through his act is trying to ride on the goodwill and the reputation of the plaintiffs. 14. The conspectus of the above discussion leads to the only conclusion that the defendant has consciously copied the colour scheme, getup and the label of the plaintiffs and has attempted to mislead the general public and take advantage of the reputation and goodwill of the plaintiffs. 14. The conspectus of the above discussion leads to the only conclusion that the defendant has consciously copied the colour scheme, getup and the label of the plaintiffs and has attempted to mislead the general public and take advantage of the reputation and goodwill of the plaintiffs. In view of this finding, the issue framed by this court is answered in favour of the plaintiffs. 15. In the result, there shall be a judgment and decree as follows: (A) A decree for permanent injunction, restraining the defendant, his servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar label, get up, and colour scheme used by the defendant or in relation to chilly powder, cumin powder, fennel powder, pepper powder, rasam powder, sambar powder, coriander powder, idly chilly powder, lemon rice powder, kulambu chilly powder, chicken fry mix powder, mutton masala, egg curry masala and fish curry masala’ or any masala items and use the same pouches, packets of masalas and spices or any other goods or by using any other trade mark which is in any way visually, and deceptively similar to the Plaintiffs’ label marks, label or device of AACHI. (B) A decree for permanent injunction, restraining the defendant, his servants, agents, distributors, or anyone claiming through them from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the defendant or by using any other trade mark which is in any way visually or deceptively similar to the plaintiffs’ trade mark AACHI label and device of AACHI in relation to any masala items and use the same pouches, packets of chilli powder, cumin powder, fennel powder, pepper powder, rasam powder, sambar powder, coriander powder, idly chilly powder, lemon rice powder, kulambu chilly powder, chicken fry mix powder, mutton masala, egg curry masala, and fish curry masala, masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually and deceptively similar to the plaintiffs trade marks AACHI or in any manner pass off the plaintiffs’ goods. (C) A decree directing the defendant to surrender to the plaintiffs, all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name ‘AVM’ and packets in the color scheme and get up or any other deceptively similar trade mark used in the pouches and packets in respect of masalas. (D) Considering the facts and circumstances of the case, rendition of accounts is not necessary for the present case. 18. The suit is allowed with costs of Rs. 25,000/- payable by the defendant to the plaintiffs.