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2019 Supreme(Mad) 2712
IN THE HIGH COURT OF JUDICATURE AT MADRAS
G. JAYACHANDRAN, J.
Relish Snacks Pvt. Ltd. - Plaintiff
Versus
M/s. Virchow Biotech Pvt. Ltd. Trading as Relish, Hyderabad - Defendant
Civil Suit No. 781 of 2010
Decided On : 06-12-2019
Advocate Appeared:
For the Plaintiff : A. Prasanna Venkat.
For the Defendant : R. Sathish Kumar.
The judgment emphasizes the significance of trade mark registration and the limitations on the effect of registered trade marks under Section 30(2)(e) of the Trade Marks Act, 1999.
Headnote:
Trade Mark - Infringement - Sections 134 and 135 of the Trade Marks Act, 1999 - The judgment discusses the application of Sections 27 and 23 of the Trade Marks Act, 1999, and the implications of the deeming provision on the registration of trade marks. It highlights the importance of registration and the limitations on the effect of registered trade marks under Section 30(2)(e) of the Act.
Fact of the Case:
The plaintiff, a food products manufacturer, claimed infringement of their trade mark 'RELISH' by the defendant, who marketed diet sugar under the same name. The plaintiff sought various reliefs, including permanent injunction and account of profits.
Finding of the Court:
The court found that neither the plaintiff nor the defendant had a registered trade mark on the date of filing the suit. The court also noted that both parties had obtained registration for 'RELISH' in different classes. Consequently, the relief of infringement of trade mark was denied. The court also dismissed the passing off claim due to lack of evidence of misrepresentation and damages.
Issues: The court framed and settled issues related to trade mark registration, use of 'RELISH' by third parties, differentiation of products, entitlement to relief of infringement, and passing off.
Ratio Decidendi: The court emphasized the importance of registration and the limitations on the effect of registered trade marks under Section 30(2)(e) of the Trade Marks Act, 1999. It also highlighted the need for evidence to establish passing off, including disrepute to goodwill, deliberate misrepresentation, and possibility of deception.
Final Decision: The court dismissed the suit, ruling that the plaintiff was not entitled to any relief sought for, and ordered the plaintiff to pay costs.
JUDGMENT :
G. JAYACHANDRAN, J.
Prayer: This Civil Suit is filed under Order VII Rule 1 of C.P.C. read with Order IV Rule 1 of High Court Original Side Rules and Sections 134 and 135 of the Trade Marks Act, 1999.
1. The Plaint averment in brief:-
The plaintiff is carrying on business of manufacturing and marketing food products. The plaintiff has adopted a distinctive trade mark RELISH for their food products. It has distinctive and peculiar colour, scheme, combination, layout, border and get-up. The products of the plaintiff under the said trade mark are being marketed in distinct packing and the same is distinct for each product. The plaintiff has created and designed its own pouch/sachet for various snacks manufactured and marketed under the trade mark RELISH.
2. Since 2002, the plaintiff has business relationship with all retail outlets like Food World, Spencers, Pantaloon, Heritage, Reliance, Tata Trent Oceanic, Nilgiris, ABRL, Food Express, etc. Due to high standard, quality and hygienic way of preparation and meticulous efforts, the plaintiff’s trade mark has captured a distinctive name in the trade and among the general public. The product of the plaintiff carrying the trade mark RELISH includes variety of refreshments, snacks, savories, etc., which are consumed by the buyers along with coffee, tea, juice, milk and other milk products as refreshment foods. The plaintiff has applied for the registration of the trade mark RELISH under the following trade mark application number in various classes:-
| S. No | Date of Application | Trade Mark (word/label) | Class | Application Number |
| 1 | 28.10.2009 | RELISH all time snacks | 30 | 187753 |
| 2 | 28.10.2009 | RELISH all time snacks | 30 | 1877572 |
| 3 | 18.12.2009 | RELISH | 01 | 1898285 |
| 4 | 18.12.2009 | RELISH | 05 | 1898291 |
| 5 | 18.12.2009 | RELISH | 29 | 1898290 |
| 6 | 18.12.2009 | RELISH | 30 | 1898289 |
| 7 | 18.12.2009 | RELISH | 31 | 1898292 |
| 8 | 18.12.2009 | RELISH | 32 | 1898288 |
| 9 | 18.12.2009 | RELISH | 35 | 1898286 |
| 10 | 18.12.2009 | RELISH | 42 | 1898287 |
| 11 | 21.11.2006 | RELISH | 30 | 1506302 |
3. The plaintiff has done extensive business under the said trade mark and its products are highly popular among the traders and public. Thus, the trade mark RELISH is always being associated with the products of the plaintiff and none else. The plaintiff’s turn over was more than three crores for the financial year 2008-2009. Due to effective sales, promotional efforts, the plaintiff’s product with trade mark RELISH has acquired high popularity and enviable reputation and goodwill in the market.
4. While fact being so, during 2nd May 2010, the plaintiff came to know that the defendant are marketing their products in the name and style of RELISH per se in respect of diet sugar. The trade mark used by the defendant is identically similar to the trade mark of the plaintiff. By extensive use of the trade mark and sales promotional efforts, the trade mark RELISH has become house hold name in respect of all various food preparations and refreshment varieties and is being associated with the plaintiff. Therefore, the adoption and use of the identical trade mark word “RELISH per se” by the defendant would result in enormous confusion in the market and the consuming public would be mislead to believe that the products sold by the defendant also emanate from the plaintiff. The use of the offending trade mark by the defendant, which is similar and identical to that of the plaintiff’s reputed trade mark label RELISH is only to enrich themselves at the cost of the reputation and popularity of the plaintiff’s trade mark RELISH.
5. The defendant has continuously copied the trade mark of
