Back
1979 Supreme(Mad) 412
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE J. SENGOTTUVELAN
Amrutanjan Limited - Appellant
Versus
Amarchand Sobachand - Respondent
Case No : O.O.C.J. Suit No. 108 of 1977
Decided On : 18 September 1979
The use of a trade mark that is deceptively similar to a registered trade mark is an infringement of the registered trade mark.
Headnote:
TRADE MARK - INFRINGEMENT - PASSING OFF - SIMILARITY - DECEPTIVE SIMILARITY - LIKELIHOOD OF CONFUSION - INJUNCTION - ACCOUNTING - DAMAGES - TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTIONS 2(D), 10, 28, 29.
Fact of the Case:
Plaintiffs, Amrutanjan Limited, a company registered under the Companies Act, 1956, had been using the trade mark 'AMRUTANJAN' for their pain balm for about 80 years. The trade mark was duly registered under the Trade Marks Act, 1940. The plaintiffs had invested considerable sums of money in advertisements and had established a name and reputation in the market. The defendants, a partnership firm, attempted to market their pain balm in a carton (Ex. P-2) that was similar to the plaintiffs' registered trade mark carton (Ex. P-1). The plaintiffs filed a suit for infringement of trade mark and passing off.
Finding of the Court:
The court found that the defendants' carton (Ex. P-2) was deceptively similar to the plaintiffs' registered trade mark carton (Ex. P-1) and that there was a likelihood of confusion in the minds of the consumers. The court held that the defendants' use of the trade mark 'Amar's Pain Balm' was an infringement of the plaintiffs' registered trade mark 'AMRUTANJAN'. The court also found that there was no evidence of passing off by the defendants.
Issues: 1. Whether the defendants' carton (Ex. P-2) was deceptively similar to the plaintiffs' registered trade mark carton (Ex. P-1)? 2. Whether there was a likelihood of confusion in the minds of the consumers? 3. Whether the plaintiffs had a cause of action for infringement or for passing off? 4. Whether the plaintiffs were entitled to a permanent injunction? 5. Whether the plaintiffs were entitled to an accounting or damages?
Ratio Decidendi: The court held that the defendants' carton (Ex. P-2) was deceptively similar to the plaintiffs' registered trade mark carton (Ex. P-1) and that there was a likelihood of confusion in the minds of the consumers. The court relied on the provisions of the Trade and Merchandise Marks Act, 1958, and the principles laid down in various judicial pronouncements to arrive at this conclusion. The court also held that the plaintiffs had a cause of action for infringement but not for passing off. The court granted a permanent injunction restraining the defendants from using the trade mark 'Amar's Pain Balm' or any other trade mark that was deceptively similar to the plaintiffs' registered trade mark.
Final Decision: The court granted a permanent injunction restraining the defendants from using the trade mark 'Amar's Pain Balm' or any other trade mark that was deceptively similar to the plaintiffs' registered trade mark. The court also dismissed the plaintiffs' claim for an accounting or damages.
J. Sengottuvelan, J.
1. The Plaintiffs Messrs Amrutanjan Limited are a limited company, incorporated under the Companies Act, 1956 and having their registered Office at No. 14/15 Luz Chruch Road, Mylapore, Madras-4. The defendants are a partnership firm. The plaintiffs stated that for about 80 years they have been regularly and in the course of trade using in connection with their 'pain balm' a distinctive trade mark called 'AMRUTANJAN'. The trade mark of the plaintiffs has a distinctive get-up and arrangement.
2. The plaintiffs have duly registered their aforesaid 'AMRUTANJAN' trade mark under the Trade Marks Act, 1940 (corresponding to the Trade and Merchandise Marks Act, 1958
3. The aforesaid marks have been popularised by the plaintiffs by costly, extensive and wide advertisements through newspapers, cinema, All India Radio etc. The plaintiffs have been investing considerable sums of money in advertisements of their goods from 1967-68 onwards. As a result of plaintiffs' vast investment in advertisements and the superior quality of the plaintiffs' product, the plaintiffs have been the unquestioned leader in the market as far as the 'pain balm' is concerned. The product is being sold by the plaintiffs throughout India and other foreign countries and it has established a name and reputation in the market. The plaintiffs have been periodically publishing the Trade Mark caution advertisements in newspapers in different languages informing the merchants and public of the statutory right vested in the plaintiffs and warning against using any carton which is similar to or which is a colourable imitation of the Registered Trade Mark of the plaintiffs.
4. The plaintiffs came to know the Defendants illegal business through his representative at Warangal, Andhra Pradesh in respect of original offer for sale of "Amar's Pain Balm" dated 24.12.1976 to one of his dealers Messrs Vajirapalli Govindagarinarayanan, General Merchant, Main Road, Warangal, which has been brought to notice by the plaintiffs' representative who intimated the same to the plaintiffs' office on 11.3.77. The aforesaid offer for sale of "Amar's Pain Balm" along with other cold rub has been signed on the face of the offer by one of the partners of Amarchand Sobachand. The defendants have been recently carrying on their spurious business and passing off their products as the product of the plaintiffs. A specimen photocopy packing of the defendants' infringing carton is also filed along with the plaint. Even a superficial examination will show that both the cartons are similar or the defendants' carton is a colourable imitation of the plaintiffs' registered Trade Mark carton produced along with the plaint. Apart from the visual imitation the ear-catching name Amar's Pain balm is having phonetic similarity with the plaintiffs' trade mark name "AMRUTANJAN" pain balm. Further the size, get-up and colour scheme of the infringing carton are identically similar to those of the plaintiffs. The majority of the public using pain balm buy the product by its outward appearance. Because of the deceptive and phonetic similarity of the impugned product the buying public are deceived and are put into a state of confusion. The defendants through their carton are misleading the public into believing that the defendants' goods are the same as the plaintiffs' goods. The conduct of the defendants in projecting into the market their pain balm with the above said infringing carton amounts to a piracy of the plaintiffs' rights under the Trade and Merchandise Marks Act, 1958.
5. The distinctive features of the plaintiffs' registered Trade Mark No. 198004 in class V-the "AMRUTANJAN" carton of the plaintiff-bear a distinctive get-up of yellow and green colour. The four sides of the carton have square borders in green and yellow. On one side of the carton, the trade mark "AMRUTANJAN" is imprinted in bold white letters on a green background below that the word 'pain balm' are imprinted in gre
