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2018 Supreme(Mad) 3433
IN THE HIGH COURT OF JUDICATURE AT MADRAS
M. SATHYANARAYANAN, N. SESHASAYEE, JJ.
KALEESUWARI REFINERY PVT LTD - Appellant
Versus
S.N.R. DHALL MILL - Respondent
Original Side Appeal No. 110 of 2018; Civil Miscellaneous Petition No. 7079 of 2018
Decided on : 08-10-2018
Advocate Appeared:
P.S. Raman, Adv., G. Kalyan Jhabakh, Adv., Ramesh Ganapathy, Adv.
Headnote:
Tamil Nadu Value Added Tax Act, 2006 - Companies Act, 1956 - Trade Marks Act, 1999 - Section 57 - Sections 29 and 33 - Section 28(3) - Trade and Merchandise Marks Act, 1958 - Section 28 - Section 28(3) - Section 28 (1) - Section 27(2) - Section 29(4) – Trademark - Monopolizing Trade - Respondent herein filed on file of this Court praying for a judgment and decree for permanent injunction restraining defendant, its directors, all their principal officers, staff, men, agent etc., from infringing trademark by using words "GOLD WINNER" together, or any other word/words/device that are identical or deceptively similar to said registered trademark of plaintiff having Registration in Class-30 in respect of dhall varieties and thereby restraining them from claiming any right through or under defendant from in any manner infringing registered trademark and passing off its products as that of plaintiffs trademark "GOLD WINNER" and also for a direction to pay to plaintiff a sum of Rs. 10,00,000/- by way of damages and also for a preliminary decree to render accounts and for delivery to plaintiff for destruction, all labels, all other print materials etc and such other materials used for infringing and passing off – Held, Submission of learned counsel appearing for respondent/plaintiff that appellant/defendant wants to become sole leader in dhall varieties and it would amount to monopolizing trade and also a restrictive trade practice - Materials placed in typed set of documents filed by appellant/defendant would also prima facie indicate that they are market leaders in respect of oil products under mark "GOLD WINNER" and they want to catch on their reputation by venturing into dhall products and in that process, had stopped using wrapper/packets "SREE GOLD" and started exclusively using word "GOLD WINNER" Range of dals" in packets/wrappers and as such, respondent/plaintiff is entitled to continuance of interim order insofar as passing off action is concerned - In result, impugned order dated made in O.A. insofar as infringement of registered mark of respondent/plaintiff alone is set aside - However, appellant/defendant is restrained from passing of their products, namely dhall varieties as that of respondent/plaintiff under trademark "GOLD WINNER" for a period of one year from date of impugned order – Appeal Partly Allowed.
M. SATHYANARAYANAN, J.
1. The respondent in O.A.No.224 of 2017 in C.S.No.164 of 2017 is the appellant. The respondent herein filed C.S.No.164 of 2017 on the file of this Court praying for a judgment and decree for permanent injunction restraining the defendant, its directors, all their principal officers, staff, men, agent etc., from infringing the trademark by using the words "GOLD WINNER" together, or any other word/words/device that are identical or deceptively similar to the said registered trademark of the plaintiff having Registration No.1232740 in Class-30 in respect of dhall varieties and thereby restraining them from claiming any right through or under the defendant from in any manner infringing the registered trademark and passing off its products as that of the plaintiff's trademark "GOLD WINNER" and also for a direction to pay to plaintiff a sum of Rs. 10,00,000/- by way of damages and also for a preliminary decree to render accounts and for delivery to the plaintiff for destruction, all labels, all other print materials etc and such other materials used for infringing and passing off.
2. The respondent/plaintiff, pending disposal of the Suit, filed O.A.No.224 of 2017, praying for ad-interim injunction restraining the defendant from infringing the trademark "GOLD WINNER" and passing off its products as that of the plaintiff under the trade mark "GOLD WINNER".
3. Learned Single Judge of this Court, vide interim order dated 10.03.2017, has granted ad-interim injunction and the said interim order came to be modified, vide order dated 17.08.2017 by permitting the respondent therein/appellant herein to market the dhall currently held in stock with the existing packing within a period of four weeks for the purpose of ensuring that ready stocks shall not deteriorate as that would constitute a national waste and in the interregnum, parties were granted liberty to negotiate a settlement, if they are so inclined. The said order of ad-interim injunction came to be made absolute, vide impugned order dated 20.03.2018 and challenging the said order, the present appeal is filed.
4. Facts leading to the filing of the present appeal have been narrated in detail in the impugned order, which is the subject matter of challenge in this appeal and for the sake of brevity, it is unnecessary to restate the facts except to cull out the relevant facts for the purpose of disposal of this appeal.
4.1. It is the claim of the plaintiff that the trademark "GOLD WINNER" was originally coined and adopted by the plaintiff in the year 1999 in respect of different varieties of Dhall and Flour preparations and they are the leading manufacturer in respect of different varieties of dhall and flour preparations and has been continuously and extensively using the trademark "GOLD WINNER" ever since 1999 onwards. The plaintiff is a partnership firm formed in the year 1985 and subsequently there was a reconstitution and it is a registered dealer under the provisions of the Tamil Nadu Value Added Tax Act, 2006 [TNVAT Act] with TIN No.33843220597 and it is also registered with the Tamil Nadu Food Safety and Drug Administration Department having Licence No.12414002003140.
4.2. It is also the claim of the respondent/plaintiff that in order to safeguard the rights acquired over the said trademark, they applied and obtained registration for the mark "GOLD WINNER (Label)" under Application No.1232740 in Class-30, wherein the word "GOLD WINNER" is prominent along with the device of a man and during the registration of the said trademark, the exclusive right towards "Device of Man" was disclaimed and the said registration has been renewed from time to time and it is valid till 05.09.2013 and as such, the respondent/plaintiff is the registered proprietor of the trademark "GOLD WINNER (Label)" having registration trademark No.1232740 in Class-30. The plaintiff also claims that due to its exclusive and extensive usage of the plaintiff's products, earned enormous amoun
