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2014 Supreme(Mad) 521
High Court of Judicature at Madras
R. SUBBIAH, J.
A.D. Padmasingh Isaac & Another
Versus
Aachi Aappakadai Chettinad
Original Applications Nos. 154 & 155 of 2013 & Civil Suit No.151 of 2013
Decided On : 28-02-2014
For the Applicants:M/s. Gladys Daniel, Advocate.
For the Respondent:J. Ravikumar, Advocate.
The applicants are entitled to protection only in respect of the products they are manufacturing and marketing under the registered trademark 'AACHI' and not for the business they are not carrying on, since the said trademark is a common word.
Headnote:
TRADEMARK - INFRINGEMENT - [Section 9(1)(a) of the Trade Marks Act, 1999, Section 31 of the Trade Marks Act, Section 46 & 57 of the Trade Marks Act] - The court considered the objection under Section 9 of the Trade Marks Act, the validity of the registered trademark, and the protection of the trademark in relation to the products being manufactured and marketed by the applicants. The court held that the objection under Section 9 of the Trade Marks Act does not serve as a ground to vacate the interim injunction. It also emphasized that the applicants are entitled to protection only in respect of the products they are manufacturing and marketing under the registered trademark 'AACHI' and not for the business they are not carrying on, since the said trademark is a common word. The court dismissed the applications and vacated the interim injunction granted by the Court.
Fact of the Case:
The applicants sought interim injunctions to restrain the respondent from using the name 'AACHI' in their restaurant business, alleging infringement of their registered trademark. The respondent contested the registration of the word 'AACHI' as a trademark, claiming it is a common word and that the applicants are not using the trademark in their restaurant business.
Finding of the Court:
The court found that the objection under Section 9 of the Trade Marks Act does not serve as a ground to vacate the interim injunction. It also held that the applicants are entitled to protection only in respect of the products they are manufacturing and marketing under the registered trademark 'AACHI' and not for the business they are not carrying on, since the said trademark is a common word. The court dismissed the applications and vacated the interim injunction granted by the Court.
Issues: The main issues were whether the objection under Section 9 of the Trade Marks Act would serve as a ground for denying the relief of the applicants, whether the registered trademark 'AACHI' would prevent the respondent from using the word 'AACHI' in their restaurant business, and whether the trademark 'AACHI' had acquired a secondary meaning.
Ratio Decidendi: The court held that the objection under Section 9 of the Trade Marks Act does not serve as a ground to vacate the interim injunction. It emphasized that the applicants are entitled to protection only in respect of the products they are manufacturing and marketing under the registered trademark 'AACHI' and not for the business they are not carrying on, since the said trademark is a common word. The court dismissed the applications and vacated the interim injunction granted by the Court.
Final Decision: The court dismissed the applications and vacated the interim injunction granted by the Court.
R. Subbiah, J.
1. Original Application No.154 of 2013 has been filed seeking for grant of interim injunction restraining the respondent, by themselves, their servants, agents, distributors or any one claiming through them from manufacturing, selling, from advertising and offering for sale using the same name AACHI used by the applicants and the trade mark/name AACHI AAPAKADAI CHETTINADU A/c Restaurant or any other similar Trade Mark name or similar sounding expression in any media and using the same in name board, invoices, letter heads and visiting cards or by using any other trade mark/name which is in any way visually or deceptively or phonetically similar to the Applicant's trade mark/name AACHI/AACHI CHETTINADU RESTAURANT and using the same in pouches, packets or using the mark in invoices, letters heads and visiting cards or part of their Hotel/Restaurant name any other trade literature or Menu Card by using any other trade mark, which is in any way visually or phonetically similar to the applicant's registered Trade Mark No.1116254 or in any manner infringing the applicant's registered Trade Marks, pending disposal of the suit.
2. Original Application No.155 of 2013 has been filed seeking for grant of interim injunction restraining the respondents by themselves, their agents or servants or any one claiming through or under them from marketing, selling advertising using in trade literature, menu cards, invoices, name boards, website, internet advertisements the mark/name Aachi Appakadai Chettinad A/c Restaurant in relation to the Restaurant or with respect to or any other food preparation or on any other business the impugned trademark/name which is in any manner deceptively or phonetically confusingly similar to the Applicant's Trade Mark/name AACHI/AACHI CHETTINADU RESTAURANT or in any other manner pass off their business or goods as and for that of the applicants, pending disposal of the suit.
3. The applicants herein are the plaintiffs and the respondent is the defendant in the suit.
4. The case of the applicants/plaintiffs in brief is as follows:-
4(1) The applicants/plaintiffs commenced their business in the year 1995 with the objective of manufacturing and marketing various kinds of masalas and spices. Over the years, the applicants have grown into one of the leading manufacturers and marketers of spices in India, by their sheer high quality and reliability and due to the enormous goodwill earned by the applicants in the course of their business. The applicants are presently dealing in over 400 different products with the Trade Mark “AACHI”. The applicants have also diversified their business activities and started manufacturing and marketing various kinds of consumer goods, within a short span of 17 years. The applicants in order to distinguish their various items of products from others, adopted the Trade Mark 'AACHI' for all their products and services. The expression 'AACHI' has become very popular because of their continuous and substantial usage of the mark over a decade. This Trade Mark has become very popular and a very valuable intellectual property of the applicants. No one can use the said expression AACHI for spices and masalas and other goods or services, for which the applicants are using the said mark. The mark is unique and distinctive of the applicants' goods and no one has used the Trade Mark AACHI for masala preparations and its allied preparations prior to the applicants. The applicants have honestly adopted the Trade Mark and have put in enormous hard work and labour and invested huge sums of money, for advertisement and sales promotional expenses. The applicants have been using the Trade Mark 'AACHI' with respect to almost all the masala preparations from the commencement of their business. The applicants have acquired enormous goodwill and reputation. In order to protect this intellectual property, particularly with respect to the Trade Mark, the applicants applied for the registration of
