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2020 Supreme(AP) 830
IN THE HIGH COURT OF ANDHRA PRADESH AT AMARAVATI
R. Raghunandan Rao, J.
Guaurav Polymers – Appellant
Versus
Delight Chemicals Private Limited – Respondent
C.M.A. No. 209 of 2019
Decided On : 20-11-2020
Advocate Appeared:
For the Appellant :K.V. Raghu Veer, Advocate
For the Respondent:Ashok Ram Kumar, Advocate
Point of law: in any action for infringement where the defendant's trade mark is not the exact mark on the register but something similar to it, the test of infringement is the same as in an action for passing of in other words, the test of the likelihood of confusion or deception arising from similarity of marks is the same both in infringement and in passing of actions.
Headnote:
Infringement of Copy Rights Act, 1957 - Trademarks Act, 1999 – Section 31- Infringement of Trademark - Passing of - Plaintiff that they have, under common law and as a result of extensive prior usage since 1985, vested rights in Trademark "SUN" as a LOGO, and "SURYA" as a word and to protect same have already filed Trademark Applications with concerned Trademark Registry and same is pending for registration - Petitioner/plaintiff has been using suffix "SURYA" to all its products till date - list of trademarks so being used has been set out in plaint and application - Whether there is a case of infringement of passing of trade mark registered in favour of defendant/appellant - Whether proprietor of a registered trade mark can maintain an action of passing off against proprietor of another registered trade mark in view of interplay between language of Section 27(2) and Section 28(3) of the Act - Whether a buyer would get confused between the goods of the Defendant and the plaintiff because of the usage of the offending trademark by the defendant such a buyer would get confused between the two marks. -
Finding of the court : Present case, there is a possibility of a buyer going to shop and asking for Surya cem and get confused by mark of defendant and accept product of defendant as it would be sold as Surya Blue or Surya ujala - Defendant as it would be sold as Surya Blue or Surya ujala - As held by High Court of Delhi in case of Surya Agro Oils Ltd. Vs. Surya Coconut Oil Industries AIR 1995 Delhi 72, it would have to be held that there is every likelihood of members of the general public or buyers of the products in question being confused and the plaintiff/appellant herein would be entitled to an injunction as granted by the trial Court –
Result :C.M.A. is dismissed
JUDGMENT :
R. Raghunandan Rao, J.
1. This appeal is filed by the defendant in the suit.
2. The respondent herein had filed O.S. No. 16 of 2017 in the Court of the X Additional District Judge, Gurazala for permanent injunction restraining the appellant herein from infringing on the trademarks or passing off trademarks held by the respondent herein and for damages, rendition of accounts under the Trademarks Act, 1999 and infringement of Copy Rights Act, 1957 against the appellant herein.
3. The pleadings in the suit were that the plaintiff, who is incorporated under the Companies Act with it's registered office at Piduguralla, Guntur District has been carrying on the business of manufacture of white lime wash in the country and distributing and selling the same under the flagship brand name Surya and the device mark of "Rising Sun". The plaintiff who had been in business since 1985 had been using the mark "Surya" in collocation with various other words and in a combination with the device "Rising Sun with seven rays".
4. The Unique, uncommon and distinctive features of the trademarks "SURYA" and logo "SUN" are an inventive combination of the following essential elements in its logo:
(a) The word "SURYA" in a specific style highlighted in the foreground in huge fonts.
(b) The picture of a rising sun in the background behind the word "SURYA" thus giving the mark a distinctive look.
(c) The Tag line "SPARKLING WHITE LIME WASH".
(d) The overall length of the mark with its unique features pertaining to the font and colour.
5. It is submitted by the petitioner/plaintiff that they have, under the common law and as a result of extensive prior usage since 1985, vested rights in the Trademark "SUN" as a LOGO, and "SURYA" as a word and to protect the same have already filed Trademark Applications with the concerned Trademark Registry and the same is pending for registration. The petitioner/plaintiff has been using the suffix "SURYA" to all its products till date. The list of trademarks so being used has been set out in the plaint and application.
6. The plaintiff submits that it had also obtained about 24 registrations of various trademarks and as such the right of the plaintiff to such marks are conclusive and indisputable as per Section 31 of the Trademarks Act, 1999.
7. It is the case of the plaintiff that the mark of the plaintiff has come to obtain certain recognition among the general public relating to the standard and quality of the products of the plaintiff on the basis of the high standards maintained by the plaintiff in the manufacturing of its products which is recognized all over the country.
8. The plaintiff claims that its mark "Surya" had come to be associated with quality products of white lime wash, cement, colours, dry cement plasters, dry mortars, wet plasters, architectural coatings etc., to such an extent that it would be treated as a well known mark as defined under Section 2(zg) of the Trademark Act, 1999.
9. The plaintiff having come to know that the defendant herein was indulging in illegal activity of selling its products by adopting the name "Surya Magical White" in relation to paints, varnishes etc., had filed a criminal complaint with the Superintendent of Police, Raipur in the year 2016 which was not acted upon. This compelled the plaintiff to file a private complaint against the defendant in the Magistrate Court which however came to be pending at the time of the filing of the suit. The plaintiff claimed that since the defendant continued to sell its products in the open market it was forced to approach the Court for the reliefs claimed in the suit as the defendant was infringing and passing off it's mark by copying the plaintiff's mark in the following manner:
(1) The drawing of a rising sun.
(2) The word "Surya White" by inserting the word "Magical" in between the mark.
(3) With exact font styles and colour combinations.
10. The plaintiff complains that the defendant's use of the essential features of the plaintiff mark d
