2019 Supreme(Mad) 1391

IN THE HIGH COURT OF JUDICATURE AT MADRAS
M. Sundar, J.
Meenakshi Overseas LLC – Appellant
Versus
V.V.V. & Sons Edible Oils Limited – Respondent
Application No. 1948 of 2018; Civil Suit No. 726 of 2017
Decided On : 01-02-2019

Headnote:

Civil Procedure Code,1908 - Order VI,VII - Rule 11,16 - Trade Marks Act, 1999 - Sections 2(2)(c),26,29,29,29(6)(c),30(2)(e),56,52(1),52(5),134 and 135 - Constitution of India,1950 - Articles 226, 226(2) - Infringement of registered trademarks - Engaged in business of selling sesame oil - Engaged in business of selling sesame oil under brand name which is registered as a trade mark in India - It is plaintiffs further case that it exports sesame oil in its regular form as well as refined form to USA Middle East and other countries - This is besides selling these products in India - This product shall henceforth be referred to as suit product and registered trade mark shall henceforth be referred to as suit TM for sake of brevity clarity and convenience - Registration certificates for suit TM qua suit products have been filed as plaint documents along with plaint but it is submitted that most important registration certificates which are most relevant for instant lis are plaint document being trademark registration certificates both for mark and both in class for Gingelly oil - While trade mark certificate is for trade mark trade mark registration certificate is for trade mark - To be noted these two trademarks are collectively referred to as suit TMs - Whether use of mark MCG by First Defendant in products intended for export to Second Defendant would constitute an infringement in terms of Act - Whether use of mark in inner casing of switchgear in a manner not visible to end users but visible only after opening of outer casing by removing screws would constitute an infringement - Plaintiff is market leader in electrical engineering sector and also exports its products to more than countries worldwide - It is using and is exclusive proprietor of corporate name Crompton Greaves and a distinctive CG logo since year - By virtue of such long continuous and extensive use trademark and logo have been distinctive of and are exclusively identified with plaintiff - Plaintiffs business extended beyond boundaries and has been identified as a global business company in light of which they unveiled a new brand identity by adopting a new CG logo since - New logo is artistically created and thereby enjoys copyright protection - Held, Use of trade mark for export trade and use when form of trade connection changes - Application in India of trade mark to goods to be exported from India or in relation to services for use outside India and any other act done in India in relation to goods to be so exported or services so rendered outside India which if done in relation to goods to be sold or services provided or otherwise traded in within India would constitute use of a trade mark therein shall be deemed to constitute use of trade mark in relation to those goods or services for any purpose for which such use is material under this Act or any other law - Use of a registered trade mark in relation to goods or services between which and person using mark any form of connection in course of trade subsists shall not be deemed to be likely to cause deception or confusion on ground only that mark has been or is used in relation to goods or services between which and said person or a predecessor in title of that person a different form of connection in course of trade subsisted or subsists - Court of view that application by first Defendant of registered trademark of ultimate importer in UK on goods intended for export to such importer in UK would not constitute an infringing use of registered trademark of Plaintiff either under Section 29(6)(c) or under Section 56(1) of Act - But today Second Defendant has started engaging First Defendant directly for supply of switchgears for eventual sale and supply to another company in UK by name CEF - Therefore First Defendant is applying trademark MCG of said company CEF on goods exported to Second Defendant - Application of trademark MCG on goods supplied by First Defendant to Second Defendant is not intended either to cause confusion in minds of public or to create an impression that goods are that of plaintiff - Even if First Defendant makes exports without affixing any trademark on goods supplier for whom they are intended viz CEF would affix and would be entitled to affix their registered trademark MCG before tapping market - At that stage Plaintiff would have no cause to complain since use of a registered trademark by proprietor would not tantamount to infringement of registered trademark of another - This is clear from Section 30(2)(e) of Act - In response to above it is contended by Respondents that mark MCG is registered trademark of a Company by name Motor Control and Industrial Switchgear which is part of a group of companies called City Electrical Factors Ltd - Trademark is registered in UK under - Word MCG is an acronym for Motor Control and industrial switch Gear - Said company CEF purchases switch gears from Second Respondent in UK - Switch gears sold by Second Respondent to their customer CEF are obliged to carry trademark MCG of company CEF - Same cannot constitute an infringement - Court are satisfied that cause of action neither wholly nor in part arose within territorial limits of Calcutta High Court and therefore Single Judge had no jurisdiction to issue a rule nisi on petition filed by respondents under Article 226 of Constitution or to make ad interim ex parte prohibitory order restraining appellants from taking any steps to take possession of land acquired - Under sub-section (5) of Section 52 of Act appellants were entitled to require respondents to surrender or deliver possession of lands acquired forthwith and upon their failure to do so take immediate steps to secure such possession under sub-section (6) thereof - Suit Dismissed