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2019 Supreme(Mad) 2392
IN THE HIGH COURT OF JUDICATURE AT MADRAS
N. SATHISH KUMAR, J.
Mahendra T. Thakkar Trading as Prakash Trading Co., Pillaiyar Kulam, Inamkarisalkulam P.O. Srivilliputhur Gujarat & Another
Versus
N. Ranga Rao & Sons Pvt. Ltd.
A.Nos. 7501 & 7502 of 2018 in C.S.No. 296 of 2018
Decided on : 25-10-2019
Advocate Appeared:
For the Appellant :Rajesh Ramanathan, Advocate.
For the Respondent:M/s. K. Rajasekaran, Advocate.
The central legal point established in the judgment is the importance of protecting a registered trademark with reputation from unfair advantage by similar or identical marks used for dissimilar goods or services, as provided under Section 29(4) of the Trade Marks Act 1999.
Headnote:
Trademark Infringement - Safety Matches - Trade Marks Act 1999 - [CYCLE] - [Trademark Infringement] - [Section 29(4)] - The court discussed the legal provisions of the Trade Marks Act 1999, particularly Section 29(4), and emphasized the importance of protecting a registered trademark with reputation from unfair advantage by similar or identical marks used for dissimilar goods or services. The court highlighted the plaintiff's continuous and extensive use of the mark 'Cycle' for over six decades, its recognition as a well-known mark, and the defendant's attempt to take undue advantage of the plaintiff's reputation, leading to infringement.
Fact of the Case:
The plaintiff, a reputed manufacturer of fragrances and allied products, including safety matches, filed a suit against the defendants for trademark infringement and passing off. The defendants, engaged in the trade of manufacturing and selling safety matches, adopted the mark 'Cycle' and logo with the device of cycle, which the plaintiff claimed as its house mark and associated with its products. The plaintiff alleged that the defendants acted with malafide intention to take undue advantage over the plaintiff's prior established trademark 'Cycle'.
Finding of the Court:
The court found that the plaintiff had a well-known and reputed trademark 'Cycle' and that the defendants attempted to take unfair advantage of the plaintiff's reputation, leading to infringement. The court emphasized the plaintiff's continuous and extensive use of the mark 'Cycle' for over six decades, its recognition as a well-known mark, and the defendants' malafide intention to usurp the goodwill and reputation of the mark 'Cycle'.
Issues: The issues involved trademark infringement, passing off, and the prior use of the mark 'Cycle' in relation to safety matches. The court also considered the plaintiff's reputation and goodwill associated with the mark 'Cycle' and the defendants' attempt to adopt a similar mark with malafide intention.
Ratio Decidendi: The court held that the plaintiff's mark 'Cycle' had acquired immense goodwill and valuable reputation, and the defendants' adoption of a similar mark with malafide intention amounted to infringement. The court emphasized the importance of protecting a registered trademark with reputation from unfair advantage by similar or identical marks used for dissimilar goods or services.
Final Decision: The court dismissed the applications filed to vacate the interim injunction and made the interim injunctions passed by the court absolute, thereby upholding the plaintiff's claim of trademark infringement and passing off.
JUDGMENT :
(Prayer: A.Nos.7501 and 7502 of 2018 have been filed to vacate the interm injunction granted in O.A.No.470 and 471 of 2018 respectively in C.S.No.294 of 2018 dated 28.04.2018.)
These applications have been filed to vacate the order of injunction granted by this Court in O.A.Nos.470 and 471 of 2018 in C.S.No.296 of 2018.
2. It is the contention of the Applicants/Defendants that the Plaintiff is from Karnataka and is not at all working for gain in Chennai within the jurisdiction of the Hon'ble Court. The Defendants are from Gujarat and interior Tamilnadu and are not doing business within Chennai jurisdiction of this Court. The suit is fraudulently framed as though to suggest that the Plaintiff commercially deals in safety matches where as in reality Plaintiff are manufacturer and trader in Agarbathi alone. The Plaintiff wantonly played fraud on the Defendant and this Court by suppressing and withholding their clause 34 Registration Certificate for the Cycle Brand which expressly shows that the Plaintiff does not commercially manufacture or sell safety matches. The Plaintiff offers safety matches as a compliment to the buyers of cycle brand Agarbathi and has no independent commercial use of Cycle Brand for safety match. The Order has been obtained without placing the registration for cycle brand in Class 34.
3. It is their further contention that the Applicants have been engaged in the trade of manufacturing and sale of safety matches. The mark "Thilak" and "CHIDYA". Apart from these two Trademarks, the other trademark under brand name "CYCLE" has been adopted in the year 2003 for the goods "SAFETY MATCHES" and hence filed Trademark application in Application No.1386815 under Class 24 on 22.09.2009 with user date as 01.05.2003 for sale in the state of Gujarat. The applicants honestly adopted the said Trademark "Cycle" in the year 2003 in respect of Safety Matches. There was none using a similar trademark in respect of the said goods for commercial sale. The applicant application was consciously filed with an area and territorial restriction in order to safeguard their legitimate interests, without any business jealousy. It is also stated that the applicants are the registered owner of the copyright in the artistic work contained in the device. Before applying for copyright protection, the TM-60 was filed on 14.01.2016 to search for identical trademark in the artistic work. On 11.2.2017 the said certificate was issued by the Trademark has been issued by the Trademark Registry with the observation that "no Tradearks identical with or deceptively similar to the said artistic works has been applied for registration under the Trade Marks Act 1999".
4. The applicant is the proprietor of the trade mark "Cycle" represented in mustard, chocolate brown and deep brown colours, comprising of (i) the expression "cycle" in Gujarati inscription and (ii) the device of Cycle, in a distinctive fashion, unique to my identity in toto. The safety matches of the said trademark label are widely marketed in Gujarat. It is the continuous and extensive use, the said Trademark label has acquired immense goodwill and valuable reputation for the goods sold thereunder. The applicant has been trading and manufacturing the product "SAFETY MATCHES' under the brand name Cycle since 2003. The Plaintiff has not filed any evidence to show the quantified profit gained by them by using the mark "Cycle" for their complimentary product. The Plaintiff are not in commercial sale and restricted their mark "Cycle" in respect of safety matches to complimentary purpose only. In the absence of commercial participation of the Plaintiff in respect of their product "Safety Matches" under the trade mark "Cycle" the Plaintiff cannot assert continuous cause of action. Hence prayed for vacating the order of injunction granted by this Court.
5. It is the case of the Respondent/Plaintiff that the Respondent have a reputed Trademark "Cycle" and the Cycle Logo with the device of CYC
