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2018 Supreme(Mad) 1969
IN THE HIGH COURT OF JUDICATURE AT MADRAS
M. SUNDAR, J.
Pradeep Cholayil & Another - Appellant
Versus
Karnataka Soaps and Detergent Limited, Karnataka - Respondent
O.A. Nos. 329 & 330 of 2018 in C.S. No. 225 of 2018
Decided On : 04-10-2018
For the Applicants :Arun C. Mohan, Advocate.
For the Respondent:R. Harikrishnan, Advocate.
Headnote:
Trade Mark - Infringement and Passing Off - The Trade Marks Act, 1999 - Section 2(1)(v), Section 2(1)(x), Section 2(1)(r) - The court discussed the provisions of the Trade Marks Act, 1999, including the definitions of 'registered proprietor', 'registered user', and 'permitted use'. The court also considered the issue of publici juris and the principle of estoppel in the context of the defendant's application for registration of a similar mark. The court found in favor of the plaintiffs, confirming the interim injunctions and setting strict time lines for trial.
Fact of the Case:
The plaintiffs alleged that the defendant was infringing their registered trade mark 'MYSOP' by using a deceptively similar mark 'MYSOAP' on cosmetic soaps. The plaintiffs claimed to be prior users of the mark and had filed for interim injunctions to interdict the defendant's actions.
Finding of the Court:
The court found that the first plaintiff qualified as a 'registered proprietor' and the second plaintiff as a 'permitted user' under the Trade Marks Act, 1999. The court also held that the defendant was estopped from raising the publici juris issue due to its own application for a similar mark. The court confirmed the interim injunctions and set strict time lines for trial.
Issues: The main issues revolved around the legal status of the plaintiffs as the registered proprietor and permitted user of the trade mark, the defendant's claim of the mark being publici juris, and the similarity between the marks.
Ratio Decidendi: The court's decision was influenced by the interpretation of the provisions of the Trade Marks Act, 1999, the principle of estoppel, and the application of the 'Parle principle' for comparing the marks. The court emphasized the need for expedited trial under the Commercial Courts Act, 2015.
Final Decision: The interim injunctions were confirmed and set to operate for a period of one year, with strict time lines for trial. The court left the issue of costs to be decided in the main suit.
1. This common order will govern both these applications, i.e., O.A.Nos.329 and 330 of 2018.
2. There are two plaintiffs and a sole defendant in the main suit. Plaintiffs 1 and 2 are applicants 1 and 2 respectively in both these applications. Sole defendant in the main suit is the lone respondent in both these applications. Parties in these two applications are referred to by their respective ranks in the main suit for the sake of convenience and clarity.
3. The fulcrum of this entire suit is a registered trade mark bearing number 1754540, in the name of V.S.Pradeep in Class 3, the date of registration being 18.11.2008 vide certificate number 1021877 dated 16.09.2011, trade mark type is 'WORD' and the mark is 'MYSOP', goods and description as found in the 'Legal Use Certificate' ('LUC' for brevity) are Soap; Antiperspirant Soaps; Cakes of Soap; Deodorant Soap; Disinfectant Soap; Soap for Foot perspiration; Toilet Soap all in Class 3. This registered trade mark which is the fulcrum of this entire suit shall hereinafter be referred to as 'suit TM' for the sake of convenience and clarity.
4. It is the case of the plaintiffs that they are manufacturing, marketing and selling cosmetics soaps and that the suit TM is being applied on the same. It is also the case of plaintiffs that they are using suit TM from 2008, a decade, i.e., 10 years later, some time in February 2018, plaintiffs came to know that the sole defendant is infringing the suit TM and passing off its products by marketing the same products, i.e., cosmetics / soaps using the mark which is deceptively similar to suit TM. It is the further case of plaintiffs that on coming to know about such infringement and passing off by the defendant, cease and desist notice dated 09.02.2018 was caused to be issued, but defendant neither replied nor responded though cease and desist notice was duly served on defendant.
5. In the aforesaid scenario, instant main suit, i.e., C.S.No.225 of 2018 was presented/filed on 06.04.2018. Along with the main suit, the instant two applications were taken out with interim prayers to interdict the defendant qua infringement of suit TM and passing off. Vide common order dated 16.04.2018, an ad interim ex parte injunction was granted, the same was extended from time to time and it is now operating.
6. Sole defendant entered appearance, filed written statement and a common counter affidavit in the main suit and in the instant applications respectively. Plaintiffs have filed a common rejoinder to the common counter affidavit which completes pleadings in the instant applications.
7. Though no application for vacate injunction was taken out, sole defendant insisted that instant applications be heard out as interim order is operating against sole defendant. Interlocutory applications were heard out. Mr.Arun C Mohan, learned counsel on behalf of plaintiffs and Mr.R.Harikrishnan, learned counsel on record for sole defendant were before this Commercial Division. I heard both learned counsel.
8. Before proceeding to examine the rival submissions and analysing the same, it is necessary to see the depiction of marks. Plaintiffs' depiction of suit TM has been filed as plaint document No.11 and the same is as follows:
9. Defendant is using a mark 'MYSOAP' and depiction of the defendant's mark has been filed as plaint document No.12 and the same is as follows:
10. To be noted, plaintiffs' suit TM, i.e., 'MYSOP', the alleged offending mark of the sole defendant, i.e., 'MYSOAP' and depiction of two marks on their respective products, i.e., cosmetic soap are not in dispute. In other words, this aspect of the matter which has been alluded to supra, particularly, marks as they appear in the wrappers/cartons of the respective products are undisputed and there is no dispute or disagreement between both sides with regard to the same.
11. It is deemed appropriate to broadly encapsulate the rival submissions.
12. Broad submissions of plaintiffs are as follows:
(a) 1st pla
