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2011 Supreme(Mad) 3504
HIGH COURT OF JUDICATURE AT MADRAS
S. RAJESWARAN
M/s. Murugan Idli Shop Rep. By its Proprietor S. Manoharan
Versus
M/s. Sri Murugan Idli Shop, Opposite Lions Club, Visagapttinam
A.Nos.1313 & 1314 of 2010 in A.Nos.1099 & 1100 of 2009 in C.S.No.952 of 2009
Decided on : 03-08-2011
For the Appearing Parties: ----------
Headnote:
Plaintiff, the proprietor of "Murugan Idli Shop" with a registered trademark, filed suit against the defendant for infringement of trademark and passing off. The defendant, operating "Sri Murugan Idli Shop," claimed the name "Murugan" is common and no one can claim exclusive rights. The court held that the plaintiff had established a prima facie case, had a reputation and goodwill, and that the defendant's use of "Sri Murugan Idli Shop" was deceptively similar and likely to cause confusion. The court found the balance of convenience favored the plaintiff and granted a permanent injunction restraining the defendant from infringing the plaintiff's trademark and passing off their goods as those of the plaintiff.
Fact of the Case:
Plaintiff, the proprietor of "Murugan Idli Shop" with a registered trademark, filed suit against the defendant for infringement of trademark and passing off. The defendant, operating "Sri Murugan Idli Shop," claimed the name "Murugan" is common and no one can claim exclusive rights.
Finding of the Court:
The court held that the plaintiff had established a prima facie case, had a reputation and goodwill, and that the defendant's use of "Sri Murugan Idli Shop" was deceptively similar and likely to cause confusion. The court found the balance of convenience favored the plaintiff and granted a permanent injunction restraining the defendant from infringing the plaintiff's trademark and passing off their goods as those of the plaintiff.
Issues: 1. Whether the plaintiff had established a prima facie case of trademark infringement and passing off? 2. Whether the defendant's use of "Sri Murugan Idli Shop" was deceptively similar to the plaintiff's "Murugan Idli Shop"? 3. Whether the balance of convenience favored the plaintiff?
Ratio Decidendi: 1. The court found that the plaintiff had established a prima facie case of trademark infringement and passing off. The plaintiff had a registered trademark for "Murugan Idli Shop" and had built a reputation and goodwill in the market. The defendant's use of "Sri Murugan Idli Shop" was deceptively similar to the plaintiff's trademark and was likely to cause confusion among consumers. 2. The court held that the defendant's use of "Sri Murugan Idli Shop" was deceptively similar to the plaintiff's "Murugan Idli Shop." The names were visually and phonetically similar, and both businesses sold similar products. The court found that the defendant's use of the name was likely to cause confusion among consumers and lead them to believe that the defendant's business was associated with the plaintiff's business. 3. The court found that the balance of convenience favored the plaintiff. The plaintiff had a registered trademark and had built a reputation and goodwill in the market. The defendant's use of "Sri Murugan Idli Shop" was likely to cause confusion among consumers and harm the plaintiff's business. The court found that the harm to the plaintiff if the injunction was not granted outweighed the harm to the defendant if the injunction was granted.
Final Decision: The court granted a permanent injunction restraining the defendant from infringing the plaintiff's trademark and passing off their goods as those of the plaintiff.
1. Application No.1313 of 2010 has been filed to vacate the order of interim injunction granted in O.A.No.1099 of 2009 in C.S.No.952 of 2009 dated 28.10.2009.
2. Application No.1314 of 2010 has been filed to vacate the order of interim injunction granted in O.A.No.1100 of 2009 in C.S.No.952 of 2009 dated 28.10.2009.
3. Application No.1099 of 2009 has been filed to grant an interim injunction restraining the respondent by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the Applicant's registered service and/or Trademark "MURUGAN IDLI SHOP" by use of the service and/or Trade marks "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the Applicant's registered service/Trade Mark or by use of identical or deceptively similar trading style or in any other manner whatsoever.
4. Application No.1100 of 2009 has been filed to to grant an interim injunction restraining the defendant by himself or his men, servants, agents, franchises, successors in interest, representatives or any of them from in any manner infringing the copyright of the plaintiff by use of the trade marks and/or trading style "SRI MURUGAN IDLI SHOP" or any mark deceptively similar to the plaintiff's registered copy right "MURUGAN IDLI SHOP" or in any other manner whatsoever.
5. Application Nos.1099 and 1100 of 2009 were filed by the plaintiffs in C.S.No.952 of 2009 for the aforesaid prayers.
6. C.S.No.952 of 2009: The case of the plaintiff, as stated in the plaint, is as follows:
The plaintiff is a registered Proprietor of "Murugan Idly Shop" under No.1279214 in Clause 42 in respect of providing food and drinks, running a Hotel, Restaurants and Food Outlets. The registration is in currency. Apart from this, the plaintiff had also obtained registration under Clause 30 under No.1207351 for the application dated 18.06.2003 in respect of Idly, Vada, Dosa, Uthappam, Chapathi. The plaintiff also obtained Copy Right for the artistic work associated with the Trade Mark "MURUGAN IDLI SHOP". The Constitution of the plaintiff has been changed from Partnership comprising of Mr.S.Manoharan and Mrs.Umamaheswari as partners to proprietory concern and necessary steps have been taken to amend the records of the Trade Mark Registry to this effect. Mr.Manoharan, the erstwhile partner is the present proprietor of the plaintiff. The plaintiff has been trading under the name of 'MURUGAN IDLI SHOP' from 1993. Prior to this, his mother Mrs.Nayagam started a small Idly Shop in the pavement in the West Masi Street, Madurai. At present, the plaintiff is having nearly a dozen branches in various places located in the cities of Chennai, Madurai and Singapore. They have plans to open up other outlets in the Middle East and other places also. The sales turnover of the plaintiff is about Rs.35 Crores per annum and the advertisement expenditure amounts to Rs.25 lakhs a year. The plaintiff's shop became very popular not only because of the quality Idlies supplied by them, but also the varieties of chutinies provided by them. Besides that, they have a common layout with a uniform Rack for storage of their food items. They are also known for their other varieties of items, namely, Jigardhanda, Sweet Pongal, Idly, Dosa, etc. The software professionals and people from North India staying in Madras are the frequent visitors to their shop. In fact, people are very familiar with the name because of the quality and the tasteful items supplied by them. Various Local Magazines have also published articles about the plaintiff's shop and their business. Thus, the mark of "MURUGAN IDLI SHOP" has become distinctive by long usage and exclusively identified as that of the plaintiff.
7. Further, their Trade Mark and the Copy Right have been popularised by various types of advertisements in Print Media like Dina Thanthi, Dina Malar, Malai Malar, Tamil Murasu, etc., and also in the Electronic Media through Popular Chan
