2014 Supreme(Mad) 3189

High Court of Judicature at Madras
ARUNA JAGADEESAN, J.
M. Sundaram, Sole Proprietor 'THAYAR' Dairy
Versus
M/s. 'THAYAR' Food Products & Others
CS. Nos. 196 of 2007 & 300 of 2007
Decided on: 15-09-2014

Headnote:

The court held that the Plaintiff is the prior user of the Trade Mark "THAYAR" and the Defendant's use of the deceptively similar Trade Mark "THAAYAR" is an infringement of the Plaintiff's Trade Mark and amounts to passing off. The court also held that the Defendant's conduct is dishonest and fraudulent and that the Plaintiff is entitled to an injunction restraining the Defendant from passing off their goods as that of the Plaintiff.

Fact of the Case:

The Plaintiff, M. Sundaram, is the son of R.M. Muthappan and carrying on business in the name and style of 'THAYAR' Dairy. The 1st Defendant M/s. 'THAYAR' Food Products is a Partnership Firm represented by its Partner Kannan S. Mahadevan and the Defendants 2 to 4 are represented to be the partners of the 1st Defendant. The Plaintiff came to know that the Defendants are using an identical and deceptively similar Trade Mark ""THAAYAR"" which is structurally and phonetically similar to the Plaintiff's Trade Mark ""THAYAR"" which has been in the continuous usage by the Plaintiff and which is the Trade Mark of the Plaintiff. The Plaintiff issued a notice to the Defendants on 14.01.2006, calling upon them (a) to desist forthwith from using or in any way be connected with the offending Trade Mark or any other deceptively similar Trade Mark in respect of the aforementioned allied products and give to the Plaintiff a written undertaking to the effect that the Defendants will not do in future any such offence, (b) to deliver to the Plaintiff for destruction all sachets, labels, dies, blocks, boxes, cartons, covers, letterheads, visiting cards and advertising materials etc. containing such offending Trade Mark label, (c) to instruct all the distributors of the Defendants and their dealers to withdraw from the market the products bearing the offending Trade Mark label in the manner aforesaid and (d) to render to the Plaintiff a true and correct account of the sales effected by the Defendant so far under the said offending Trade Mark label in respect of the aforesaid goods to enable them to assess the damage to be claimed from the Defendants.

Finding of the Court:

The court found that the Plaintiff is the prior user of the Trade Mark "THAYAR" and that the Defendant's use of the deceptively similar Trade Mark "THAAYAR" is an infringement of the Plaintiff's Trade Mark and amounts to passing off. The court also held that the Defendant's conduct is dishonest and fraudulent and that the Plaintiff is entitled to an injunction restraining the Defendant from passing off their goods as that of the Plaintiff.

Issues: Whether the Plaintiff is the prior user of the Trade Mark "THAYAR"?

Ratio Decidendi: The court held that the Plaintiff is the prior user of the Trade Mark "THAYAR" and that the Defendant's use of the deceptively similar Trade Mark "THAAYAR" is an infringement of the Plaintiff's Trade Mark and amounts to passing off. The court also held that the Defendant's conduct is dishonest and fraudulent and that the Plaintiff is entitled to an injunction restraining the Defendant from passing off their goods as that of the Plaintiff. The court relied on the following principles of law in reaching its decision: 1. The owner of a Trade Mark is entitled to an injunction restraining the Defendant from using a deceptively similar Trade Mark if the Defendant's use is likely to cause confusion or deception among the public. 2. The prior user of a Trade Mark is entitled to protection against the subsequent use of a deceptively similar Trade Mark by a competitor. 3. The adoption of a Trade Mark with the intention of passing off one's goods as those of another is dishonest and fraudulent.

Final Decision: The court decreed the suit in CS.No.196/2007, except the prayer relating to infringement, and dismissed the suit in CS.No.300/2007, except the prayer relating to infringement. The court also granted an injunction restraining the Defendant from passing off their goods as that of the Plaintiff and directed the Defendant to render true and faithful accounts of all the profits earned by them through service and sale of the offending marks and pay the amount found due on such taking of accounts to the Plaintiff. The court also directed the Defendant to surrender to the Plaintiff all the impugned products produced and manufactured by the Defendants, containing the same name of the offending marks, with all documents pertaining thereto.