2015 Supreme(Mad) 12

HIGH COURT OF JUDICATURE AT MADRAS
R. SUBBIAH, J.
Superfil Products Limited
Versus
Sreema Nets represented by its partner/Proprietor & Another
Original Application No. 839 of 2014 in Civil Suit No. 679 of 2014
Decided on: 05-01-2015

Headnote:

Indian Companies Act, 1956 - Indian Copyright Act, 1957 - Trademarks Act - Section 29(4) & (7) - Claiming any right - Seeking for grant of interim injunction - Order to promote and advertise its products - Plaintiff is a reputed company which was incorporated as a private limited company under name and style of SUPERFIL PRODUCTS PRIVATE LIMITED as per provisions of Indian Companies Act, 1956 – Subsequently plaintiff decided to convert itself from private limited into public limited company and changed its name as SUPERFIL PRODCUTS LIMITED through a special resolution dated July - Plaintiff from date of its incorporation has been carrying on business of manufacturing and trading of Nylon Polyester and Synthetic Monofilaments and Multifilament Yarns Resins Fishing Lines Fishing nets Coils Ropes Industrial Filters Industrial Tire and Medical Fabrics Tarpaulin Cloth Conveyor Beltings Zip Fasteners Transmission V and Fan - Belts etc under trade name SUPERFIL and trademark SUPERLINE with device of an elephant and slogan tag line Soft Strong, Transparent - Plaintiff has become a well-known and a reputed company that delivers synthetic fiber products especially that of fishing lines with the finest quality across globe under its trade name - Plaintiff has also been recognized and accorded status of EXPORT HOUSE by Zonal Joint Director General of Foreign Trade Ministry of Commerce and Industry Government of India in accordance with provisions of Foreign Trade Policy - Plaintiff with an intention to create a brand identity for its quality products among target consumers as well as general public and further to signify a patronage with its reputed Trade Name SUPERFIL has conceived conceptualized adopted and used trade mark SUPERLINE FISHING LINES and Device of an Elephant in appropriate color font style and layout since February and has been continuously uninterruptedly and extensively using said Trademark since its commencement of usage in relation to fishing line and other said products – Held, It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader irrespective of said trade mark having acquired a secondary meaning and distinctiveness in relation to traders products does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products - Court have no hesitation in stating albeit without prejudice to rights and interest of plaintiff in present suit that by adopting such a purely descriptive and laudatory expression Sugar Free as its trade mark plaintiff must be prepared to tolerate some degree of confusion which is inevitable owing to wide spread use of such trade mark by fellow competitors - Simply because plaintiff claims to be using expression Sugar Free as a trade mark much prior to launch of defendants product Pro Biotic Frozen Dessert in market does not give this Court a good ground for imposing a blanket injunction on defendant from using expression Sugar Free especially when defendant intends to use this expression only in its descriptive sense and not as a trade mark and even otherwise when use of this expression is widespread in relation to foods and beverages - Senior counsel therefore rightly submitted that following principles can be deduced - In order to ensure public interest that a mark which can indicate character or quality of goods cannot be registered unless it is a well-known mark or it has acquired distinctiveness by use - It is not necessary to establish by Opponent that such descriptive use is in fact is being made by other traders - It is sufficient if mark has one of meanings which indicates characteristic of goods - Dictum laid down in above said judgments would show that there cannot be any agitation with regard to descriptive word - In instant case word SUPER used in label of plaintiff is only a descriptive word and trademark of plaintiff viz. SUPERLINE has to be read in whole and it cannot be dissected or split into its component parts - Therefore Court do not find any similarity between marks of plaintiff and defendants. Therefore, the judgments relied upon by the learned counsel for the plaintiff cannot be made applicable to the facts of the present case - Application is dismissed