JUDGMENT : (Prayer: Civil Suit has been filed under Order IV, Rule 1 O.S.Rules read with Order 7 Rule 1 CPC read with Section 27, 134 and 135 of the Trade Marks Act, 1999 and Section 51, 55, 58 and 62 of the Copy Rights Act, 1957, praying to pass a judgment and decree for:- (a) A Perpetual injunction restraining the defendants, their distributors, stockiest, servants, agents, retailers, representatives, sister concerns, affiliates or any other person claiming under/through them from in any manner infringing the plaintiffs registered trademark ‘UDHAIYAM’ and/or the mark/device/logo/artistic work of sunrays by hosting websites/web pages, manufacturing, selling, offering for sale, stocking, advertising, exporting, importing either directly and/or indirectly any goods and in particular any Masala powders or other food products under the trademark ‘UDAYA’ and/or the mark/device/logo/artistic work of sunrays as shown in plaint document No.12 either per-se or in combination and/or any other mark/device either in English or Tamil or any other language, which is idential with and/or deceptively similar to plaintiffs’ registered trademark “UDHAIYAM” and/or the mark/device/logo/artistic work of sunrays or in any other manner whatsoever. (b) A perpetual injunction restraining the defendants, their distributors, stockiest, servants, agents, retailers, representatives, sister concerns, affiliates or any other person claiming under/through them from in any manner hosting websites/webpages, manufacturing, selling, offering for sale, stocking, advertising, exporting, importing either directly and/or indirectly any goods and in particular any Masala Powders or other food products using the trade mark ‘UDAYA’ and/or the mark/device/logo/artistic work of sunrays, as contained in Plaint Document No.12, either per-se or in combination with any other mark/device/logo/artistic work either in English or Tamil or any other language which is identical with or deceptively similar to the plaintiffs trademark ‘UDHAIYAM’ and/or the plaintiff’s mark/device/logo/artistic work of Sunrays so as to pass off the defendants products as and for the products of the plaintiffs or in any other manner whatsoever connected with the plaintiff. (c) A perpetual injunction restraining the defendants, their distributors, stockiest, servants, agents, retailers, representatives, sister concerns, affiliates or any other person claiming under/through them from in any manner committing acts of copyright infringement by printing, stocking, manufacturing, selling, offering for sale, stocking, advertising directly or indirectly, any goods, and in particular any masala powders or other food products, under the mark/label/device/logo/artistic work of sunrays, as contained in plaint document No.9, or any other mark/label/device/logo/artistic work of sunrays, which is identical with or deceptively similar to the plaintiffs’ mark/label/device/logo/artistic work as contained in Plaint Document NO.9 or in any other manner whatsoever; (d) A perpetual injunction restraining the 1st defendant from using the name UDAYA MASALA or any other name which is identical with/deceptively similar to the plaintiffs trademark UDHAIYAM as her proprietary concern’s name either in English or Tamil or any other language. (e) The defendants be ordered to surrender to plaintiffs for destruction all packed goods, label, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trademark ‘UDAYA MASALA’ and/or the mark/label/device/logo/artistic of sunrays either in English or Tamil or any other language. (f) A preliminary decree be passed in favour of the plaintiffs directing the defendants to render account of profits made by use of trademark ‘UDAYA MASALA’ and/or the mark/label/device/logo/artistic of sun rays either per-se or in combination and/or any other mark either in English or Tamil or any other language and a final decree be passed in favour of the plaintiffs for the amount of profit thus found to have been made by the defendant after the latter have rendered accounts. (g) The defendants be ordered and decreed to pay to the plaintiffs jointly and severally a sum of Rs.25,01,000/- (Rupees Twenty Five lakhs one thousand only) as special damages for acts of passing off and infringement of trade mark and copy right committed by them. (h) for costs of the suit.) 1. This suit has been filed by the plaintiffs alleging infringement of the registered trade mark of the plaintiffs, passing off of goods and infringement of copyright in respect of the artistic work contained in the label and the plaintiffs have sought for various reliefs against the defendants. “IMAGE” 2. (h) for costs of the suit.) 1. This suit has been filed by the plaintiffs alleging infringement of the registered trade mark of the plaintiffs, passing off of goods and infringement of copyright in respect of the artistic work contained in the label and the plaintiffs have sought for various reliefs against the defendants. “IMAGE” 2. The plaintiff is engaged in the business of marketing food and allied products such as dhalls, atta, rava, maida, spices etc and various types of rice, sugar and masala powders under the Trade Mark “udhaiyam”. It is stated that the “IMAGE” plaintiff hasbeen continuously using this mark from the year 1940 onwards. The plaintiff applied for and obtained registration of the trademark udhaiyam in the year 1993 in respect of goods contained in class 30. The plaintiffs’ trade mark along with the device of sunrays is portrayed as 3. The Plaintiff has obtained registration certificates for products falling under class 16, 30 and 31. 4. The plaintiff claims that their trademark and label has attained a distinctive character and the general public have come to exclusively associate the trade mark and the label. 5. The plaintiff has also made necessary averments to substantiate that they have sufficient sales turnover by using the mark and label. 6. The grievance of the plaintiff is that during August 2017, they came to know that the defendants are marketing masala powders under the trade mark ‘UDAYA MASALA’. The plaintiff-complains that the defendants are using a similar trademark with identical logo/artistic work. In view of the above, the plaintiff has alleged infringement of registered trademark of the plaintiffs’, passing off of goods and infringement of copyright in respect of artistic work contained in the label. Accordingly, various reliefs have been sought for by “IMAGE” the plaintiff. 7. The defendants have filed a written statement. The defendants have claimed that they are marketing masala products under the name “UDAYA MASALA” from the year 2012 onwards. According to the defendants, they have used their son’s name Udhaya varma and named the mark as “UDAYA MASALA”. The further case of the defendants is that ‘Udhaiyam’ or ‘Udaya’ are common names and it is being used by various manufactures in Class 29 and 30 goods. The further stand taken by the defendants is that there is no infringement of the trademark, since the goods in question are entirely different. The further case of the defendants is that ‘Udhaiyam’ or ‘Udaya’ are common names and it is being used by various manufactures in Class 29 and 30 goods. The further stand taken by the defendants is that there is no infringement of the trademark, since the goods in question are entirely different. On the very same ground, the defendants have also refuted the claim of passing off. Insofar as the copyright is concerned, they have taken a stand that nobody has an exclusive monopoly over sunrays being used as a label mark and they have also decided to modify the label mark. The defendants have also undertaken not to use the trademark udaya masala or udaya for any other food products except masala products and spices. 8. Based on the pleadings, this Court framed the following issues:- 1. Whether the use of the name/mark Udaya as a trade mark by the defendants in respect of their spices and masala products is bonafide? And if so, are the defendant’s entitled to use the same by virtue of Section 35 of the Trademarks Act, 1999? 2. Whether the use of the deceptively similar trade mark/proposed mark/any other mark udaya/udaya masala by the defendants in respect of their goods viz. spices and masala products, which are allied to the plaintiffs goods, amount to infringement of the plaintiff’s registered trademarks and/or sunrays device, and /or the tort of passing off? 3. Whether the plaintiff can claim that the defendants have infringed their trade mark when the products of the plaintiff and defendant fall under two different class of products under the International Classifications of goods and Services (Nice Classifications)? 4. Whether the plaintiff can claim proprietary right over the artistic work contained in the sunrays device to the exclusion of the defendant? 5. Whether the defendant proves that the name/mark UDHAYAM has become publici juris? 6. Whether the mark/label/device/logo/artistic work of sunrays of the plaintiff is infringed by the defendant in using the trademark/device/artistic work UADYA MASALA? 7. Whether the plaintiff is entitled to relief as prayed for? 9. The manager of the plaintiff company was examined as PW1 and Ex.P1 to P19 and MO1 [series five packets] were marked on the side of the plaintiffs. The second defendant entered the witness box as DW1 and affidavit of evidence was filed on 11-11-2019. 7. Whether the plaintiff is entitled to relief as prayed for? 9. The manager of the plaintiff company was examined as PW1 and Ex.P1 to P19 and MO1 [series five packets] were marked on the side of the plaintiffs. The second defendant entered the witness box as DW1 and affidavit of evidence was filed on 11-11-2019. Fifty documents were marked on the side of the defendants as Exhibit D1-D50. The witness did not thereafter appear for giving evidence and was not able to be subjected to cross-examination. Ultimately, the learned counsel for the defendants reported no instructions and in view of the same, the defendant side evidence was closed on 12-11-2021. In view of this development, the affidavit of evidence of DW1 will stand eschewed. Insofar as the documents that were marked on the side of the defendants as exhibits Ex.D1 to Ex.D50, the same is inadmissible in view of the fact that the application filed by the defendants for filing the documents in A.No.9557 of 2019 came to be dismissed by this Court by an order dated 17.12.2019 and the same was later confirmed by the Division Bench in Appeal. In the light of this order, the defendants cannot be allowed to mark the documents, which were not even filed along with the written statement. 10. Heard the learned counsel for the plaintiffs. There is no representation for the defendants either in person or through counsel. 11. ISSUES NOS.2, 3 AND 6 ARE TAKEN UP FOR DISCUSSION:- 11.1. The plaintiff is engaged in the business of marketing food and allied products and they have applied for and obtained registration of the trademark “IMAGE” with respect to goods contained in class 16, 30 and 31. The same is evident from exhibit P3, P4 (series), P8 and P10. It is also evident from the advertisements of the plaintiff marked as exhibit P18 that they have been using the mark and label for a range of products from the year 1993 onwards. The sales turnover of the plaintiffs’ by using the mark and label is evident from exhibit P16 and P19. A cumulative consideration of all these materials clearly goes to show that the plaintiffs have established a separate identity for their products and have gained sufficient reputation and good will. 11.2. The mark of the defendants is “IMAGE”. Admittedly the defendants are using this mark for marketing masala powders. A cumulative consideration of all these materials clearly goes to show that the plaintiffs have established a separate identity for their products and have gained sufficient reputation and good will. 11.2. The mark of the defendants is “IMAGE”. Admittedly the defendants are using this mark for marketing masala powders. The defence taken by the defendants is that they are using the name of their son udhaya varma for trading masala powders and that such usage of personal name is protected under Section 35 of the Trade Marks Act, 1999, (hereinafter called as the “Act”). The further defence that has been taken by the defendants is that they are using the mark udaya masala only for masala products and spices and the plaintiffs are not involved in marketing of these products. It is further stated that the impugned mark is not deceptively similar to the mark of the plaintiff, more particularly since they are dealing with different products. The defendants have also taken umbrage on the ground that there are various manufacturers with the name udhayam in class 29 and 30 goods and hence, there can be no infringement under Section 29 of the Act. 11.3. In the present case, the goods in question are bought and consumed by a common man. Even at the inception, it must be clarified that the plaintiff has been manufacturing and marketing spices and masala products and the same is evident from the materials placed before this Court. Therefore, the stand taken by the defendants as if the plaintiff is not manufacturing those products is unsustainable. 11.4. When it comes to consumable goods which are bought by a common man, the similarity and the consequent confusion that it is likely to cause must be judged from the eyes of :- (a). an unwary customer, (b).with average intelligence and (c).with an imperfect re-collection. In the present case, there is certainly a similarity in the trade name. There is also a deceptive similarity in the mark/label/artistic work of sunrays. When it comes to infringement of registered trademarks, the Court must only see if there is an identical mark or a deceptively similar mark. In such cases, a valid registration mark is enough and there is no requirement to establish that the registered mark holder has earned a goodwill/reputation. However, in the present case, the plaintiff has certainly earned goodwill and reptation. 11.5. In such cases, a valid registration mark is enough and there is no requirement to establish that the registered mark holder has earned a goodwill/reputation. However, in the present case, the plaintiff has certainly earned goodwill and reptation. 11.5. This Court must bear in mind the test that was suggested by the Hon’ble Supreme Court in [Parle Products (P) Ltd vs. J. P. & Co. Mysore] in 1972 1 SCC 618 , wherein the Hon’ble Supreme Court held that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two “IMAGE” are to be considered. The Court should not place the two products side by side and find out the differences. It is enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person. 11.6. In the present case, the defendants are using a similar mark for identical goods. In other words, the defendants are using for masala products and spices. 11.7. This Court has carefully seen the registered trade mark of the plaintiff and the “IMAGE” impugned mark of the defendants “IMAGE” and applied the test suggested by the Hon’ble Supreme Court and it is found that the impugned mark is deceptively similar. A consumer who goes to a grocery store will certainly be misled by the overall getup of the impugned mark used by the defendants and there are all chances that he will get confused and may think the product is manufactured and sold by the plaintiff. 11.8. In view of this finding, the plaintiff has made out a case for infringement of the registered trademark against the defendants. The defendants are also using the impugned mark for spices and masala products, which is specifically dealt with by the plaintiff and the products handled by the defendants cannot be said to be falling under different class of products. 11.9. Insofar as the action under passing off, the said common law right is available to the plaintiff even insofar as a registered trademark. The plaintiff has certainly made out a case of earning goodwill and reputation in the market. The defendants have entered the market admittedly only in the year 2012 and the plaintiff is in the market from the year 1940 onwards and their earliest trademark registration had taken place in 1993. The plaintiff has certainly made out a case of earning goodwill and reputation in the market. The defendants have entered the market admittedly only in the year 2012 and the plaintiff is in the market from the year 1940 onwards and their earliest trademark registration had taken place in 1993. Even the subsequent registrations have taken place between the years 2002-06. Hence the defendants are clearly a late entrant dealing with similar goods. The reputation and goodwill earned by the plaintiffs’ over a period of time is sought to be taken advantage of by the defendants and they are attempting to have a deceitful economic advantage. Therefore, this Court has no hesitation to come to a conclusion that the defendants by using the mark “UDAYA MASALA” in respect of their goods are passing off the registered trade mark of the plaintiff. The issues taken up for consideration are answered accordingly. 12. THIS COURT WILL NOW TAKE UP ISSUE NOS.1 AND 5 FOR CONSIDERATION:- 12.1. The defendants have taken a stand as if the name ‘udhaiyam’ is used by various other manufacturers who are deling in class 29 and 30 goods. Except for a statement made in the written statement, the defendants have not chosen to “IMAGE” substantiate this claim by getting into the witness box and by filing the relevant documents. Hence, this Court cannot come to a conclusion that the name/mark udhaiyam has become publici juris. 12.2. Insofar as the bonafides claimed by the defendants to the effect that they have kept the name of their son for the product, the same is not sustainable. It must be kept in mind that the plaintiffs’ is a registered trademark holder who has been using for a very long time. The defendants who entered the market in the year 2012, conveniently picked up a deceptively similar mark/label and are attempting to justify as if they used their son’s name. According to the defendants their son’s name is ‘udhaya varma’. If they are so genuine, they could have taken the later part of their son’s name and sold their products. Dragging the name of the son is more a lame excuse given by the defendants who have obviously attempted to take advantage of the goodwill and reputation of the plaintiffs. According to the defendants their son’s name is ‘udhaya varma’. If they are so genuine, they could have taken the later part of their son’s name and sold their products. Dragging the name of the son is more a lame excuse given by the defendants who have obviously attempted to take advantage of the goodwill and reputation of the plaintiffs. Except for the ipse dixit of the defendants in the written statement, there is no other material to justify the stand taken by them. These issues are answered accordingly. 13. THIS COURT WILL TAKE UP ISSUE NO.4 FOR CONSIDERATION: In the present case, there is a distinctive label which qualifies as an ‘artistic work’ under Section 2 (c) of the Copyright Act. It will also qualify as a mark under Section 2 (m) of the Act. The plaintiff who is the owner of the artistic work will have the exclusive right to use the labels under Section 14 of the Copyright Act and Section 27 of the Act. The distinctive label is apparent on a close scrutiny of exhibit P7, P8 and P10. The exclusivity of the trademark/label of the plaintiff has already been recognised by this Court while granting an interim order in their favour and the same is evident from Ex. P9. The use of the trademark ‘udaya masala’ along with a device of sunrays, which is evident from Ex. P13 and MO1 clearly shows that the defendants have infringed the artistic work contained in the mark of the plaintiff and hence, it amounts to infringement of Copyright contained in the sunrays device. This issue is answered accordingly. 14. This Court will go into the final part of this judgment regarding the reliefs for which the plaintiff will be entitled to. This Court has already found that the defendants have infringed the registered trade mark of the plaintiffs and have passed off the registered trademark and the sunrays device of the plaintiff. That apart, the defendants have also infringed the copyright of the plaintiffs by adopting the artistic work contained in the sunrays device for which the plaintiff has the exclusive right. 15. In view of the above, the plaintiff will be entitled for the relief of permanent injunction sought for by them and for directions to the defendants as specified in the relief portion. 15. In view of the above, the plaintiff will be entitled for the relief of permanent injunction sought for by them and for directions to the defendants as specified in the relief portion. Insofar as the relief of damages is concerned, there is no material to determine the damage for the present and a complete picture will emerge only after the defendants render their accounts and reveal their profits. Hence this Court is not inclined to fix any damages for the present. 16. In the result, there shall be a judgment and decree for:- (a) 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 dhalls, atta, rava, maida, spices etc and various types of rice, sugar and masala powders under the Trade Mark udahyam nor use the same pouches, packets “IMAGE” 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. (b) 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 “UDHAYAM” label in relation to any dhalls, atta, rava, maida, spices etc and various types of rice, sugar and masala powders 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. (c) There shall be a direction for directing the Defendants 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 ‘UDHAYMASALA’/“IMAGE”. (c) There shall be a direction for directing the Defendants 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 ‘UDHAYMASALA’/“IMAGE”. or other deceptively similar trade mark used in the pouches and packets in respect of masalas and (d) There shall be a preliminary decree directing the defendants to render true and faithful accounts of the profits earned by them by using the offending trade mark “UDAYA MASALA”/“IMAGE”from the date of filing of this suit up to the date of the judgment and decree passed in this suit. 17. The suit is accordingly allowed and the defendants directed to pay cost of a sum of Rs. 2,50,000/- to the plaintiff.