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2015 Supreme(Mad) 1351
HIGH COURT OF JUDICATURE AT MADRAS
R. SUBBIAH, J.
M/s. Sivanesan & Co., represented by its Partner S. Sivanesan - Appellant
Versus
M/s. Kanchan Home Appliances, Rep. by Kamala Devi & Others - Respondents
Original Application Nos. 243 & 244 of 2014 in Civil Suit No. 182 of 2014
Decided On : 17-03-2015
For the Applicant:R. Rajesh, Advocate.
For the Respondents:Ashok Kumar, Advocate.
Headnote:
Trade Mark - Infringement - Code of Civil Procedure - Order XIV Rule 8, Order XXXIX Rules 1 & 2 - Trade Marks Act, 1999 - Section 29 - [7, 11, 21] - The court granted interim injunction restraining the defendants from infringing the plaintiff's registered trade mark 'Premier' by using the offending trade mark 'Premier Dezire' or any other trade mark or device which is identical or deceptively similar to that of the plaintiff's registered trade mark and trade mark label 'Premier'.
Fact of the Case:
The plaintiff, M/s.S.Sivanesan & Co, a partnership firm, has been carrying on business in manufacturing and marketing various products under the trade mark 'Premier' since 1975. The plaintiff holds registered trade marks in India and other countries and has taken steps to protect their trade mark. The defendants were found selling products under the mark 'Premier Dezire' with unethical intentions to cash upon the reputation and goodwill built by the plaintiff.
Finding of the Court:
The court found that the plaintiff had a prima facie case as they had been using the trademark 'Premier' since 1975, and the continuous and long usage of the word had given it a secondary meaning. The court granted interim injunctions against the defendants, restraining them from infringing the plaintiff's registered trade mark 'Premier' by using the offending trade mark 'Premier Dezire' or any other deceptively similar trade label.
Issues: Whether the defendants were entitled to use the mark 'Premier Dezire' and whether the plaintiff had a prima facie case for grant of interim injunction.
Ratio Decidendi: The continuous and long usage of the mark 'Premier' by the plaintiff since 1975 had given it a secondary meaning, and the defendants' usage of the offending trademark would cause irreparable loss to the plaintiff, justifying the grant of interim injunctions.
Final Decision: The court allowed the plaintiff's applications and made the interim injunctions granted by the court absolute, while dismissing the defendants' applications seeking to vacate the interim injunction orders.
1. Original Application No.243 of 2014 has been filed by the applicant/plaintiff under Order XIV Rule 8 of Original Side rules read with Order XXXIX Rules 1 & 2 of Code of Civil Procedure, praying to grant ad-interim injunction restraining the respondents/defendants, their men, agents, servants or any one claiming through them from in any manner infringing the applicant/plaintiff's registered trade mark 'Premier' by using the offending trade mark 'Premier Dezire' or any other trade mark or device which is identical or deceptively similar to or a colourable imitation to that of the applicant/plaintiff's registered trade mark and trade mark label 'Premier', pending disposal of the suit.
2. Original Application No.244 of 2014 has been filed by the applicant/plaintiff under Order XIV Rule 8 of Original Side rules read with Order XXXIX Rules 1 & 2 of Code of Civil Procedure, praying to grant ad-interim injunction restraining the respondents/defendants, their men, agents, servants or any one claiming through them from in any manner passing off of the goods of the respondents/defendants as those of the applicant/plaintiff by using the offending trade mark 'Premier Dezire' or any other trade mark label/device which is similar/deceptively similar to that of the applicant/plaintiff's trade mark 'Premier', pending disposal of the suit.
3. The applicant herein is the plaintiff and the respondents herein are the defendants in the suit. For the sake of convenience, the parties are referred to as per their rankings in the suit.
4. The case of the plaintiff, in brief, is as follows:-
4(1) The plaintiff viz., M/s.S.Sivanesan & Co, is a partnership firm and ever since the formation of the plaintiff-firm on 1st April, 1974, the plaintiff is carrying on business in manufacturing and marketing inter alia Mixies, Grinders, Non-stick Cookware, Household Utensils including Kitchen Utensils, Containers, Domestic Appliances and Pressure Cookers under the trade mark 'Premier'.
4(2) The plaintiff is a family concern and there are other related/associated partnership firms of the same family group, carrying on same or similar business in the market and the list of all the firms of the group of the plaintiff are as follows -
(a) M/s. Sivanesan & Co. (plaintiff)
(b) M/s. Sivanesan Company
(c) M/s. Premier Home Appliances
(d) M/s. Houseware Industries
(e) M/s. Premier Aluminium Company
(f) M/s. Sivanesan Company (Unit II)
(g) M/s. SS Packaging
(h) M/s. Sivanesan Company (Ind)
(i) M/s. Premier Marketing
(j) M/s. Veena Marketing & Distribution
(k) M/s. Ketana Home Collections
M/s. Sivanesan Company, M/s. Premier Home Appliance and M/s. Houseware Industries are the direct product manufacturing firms. M/s. Premier Aluminium Company and M/s. SS Packaging are firms offering service/assistance to the product manufacturing firms stated above. M/s. Sivanesan Company (Ind) deals entirely on the export side of the group. M/s. Premier Marketing, M/s. Veena Marketing & Distribution and M/s.Ketana Home Collections are purely domestic marketing set up to sell the products manufactured by the product manufacturing firms stated above.
4(3) The plaintiff have done extensive business continuously ever since 1975 using the trade mark 'Premier' without any interruption. By virtue of such continuous use and tireless promotion of the said products under the trade mark 'Premier', the said mark has become highly distinctive of the goods of the plaintiff and it denotes and connotes the goods of the plaintiff alone. In fact, in respect of Mixies, Grinders, Non-stick Cookware and Pressure Cookers, the trade mark 'Premier' enjoys high popularity and there is an ever increasing demand for such goods under the trade mark 'Premier'. Due to high standards maintained by the plaintiff in their products, extensive sale promotions and tireless efforts, their products enjoy high demand in the market.
4(
