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IN THE HIGH COURT OF MADRAS
N. Sathish Kumar, J.
N.S. Krishnamoorthy and Ors. – Appellants
Versus
Afru Hearing Aid Centre – Respondent
C.S. No. 942 of 2017
Decided On : 30-10-2019
Trade Mark Act 1999 – Section 34 – Suit has been filed for a permanent injunction restraining the defendants and his men from in any manner infringing the copyright and trademark of the plaintiff or trade name Hearing Aid Centre and passing off the plaintiffs goods as that the defendant and for cost – Brief facts of the plaintiff case – Plaintiffs are carrying on business in wholesale and retail trading and marketing of Hearing Aids and Apparatus under the name and style of Hearing Aid Centre with HAC logo for the last 36 years – They have gained reputation and goodwill attached to their trade name and trade mark – Plaintiffs Hearing Aid Centre [HAC] is a pioneer in the hearing health care industry and has been at the forefront of all this from the day one diagnosis with suitable hearing technology –Held, Without going into the question whether the conclusion arrived at by the Division Bench that the trade mark is descriptive is correct or not, it appears to us, and as is conceded by both parties before us, that the enunciation of principle of law with regard to the protection available even in respect of the descriptive trade mark was wrong – Descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular source – Court, therefore, remand the matter back to the Division Bench of the High Court so that it may address its mind to this question without disturbing the other conclusions arrived at this stage – In the event, the Division Bench answers the additional issue formulated by us against the appellant, it will be open to the appellant to raise all the issues which have already been concluded and which are the subject matter of this appeal in any further appeal as it may be entitled to prefer from the final decision of the Division Bench – It is made clear that the trial of the suit may also be proceeded with and concluded expeditiously without being inhibited either by the pendency of the appeal or by any observation in the orders of the High Court on the interlocutory application – Defendant is dealing with similar business from the year 2013, the suit is dismissed.
JUDGMENT :
N. Sathish Kumar, J.
1. This suit has been filed for a permanent injunction restraining the defendants and his men from in any manner infringing the copyright and trademark of the plaintiff or trade name 'Hearing Aid Centre' and passing off the plaintiff's goods as that the defendant and for cost.
2. Brief facts of the plaintiff case is as follows:
2.1. The plaintiffs are carrying on business in wholesale and retail trading and marketing of 'Hearing Aids and Apparatus' under the name and style of 'Hearing Aid Centre' with 'HAC' logo for the last 36 years. They have gained reputation and goodwill attached to their trade name and trade mark from the year 1981. The plaintiffs' 'Hearing Aid Centre' [HAC] is a pioneer in the hearing health care industry and has been at the forefront of all this from the day one diagnosis with suitable hearing technology. The plaintiffs have obtained registration of their trade name 'Hearing Aid Centre' with 'HAC' logo under the trade Mark No. 85248 and 1523851 in class 10 in respect of goods Hearing Aids and Apparatus in the name of the first plaintiff by claiming user from the year 1981. The first plaintiff is the registered proprietor of the trademark 'Hearing Aid Centre' with 'HAC' logo under trademark No. 852348 in class 10 and also 'HAC' logo alone under Trademark No. 1523851 in class 10. The first plaintiff also permitted his firm, the second plaintiff herein, to continuously use the said registered trademarks. Thereby the plaintiffs have acquired a right of property in the said trademark. The plaintiffs' sales networks almost covered all major cities in India having 18 centers in 11 cities including six branches in Chennai. Thereby, the plaintiffs' trademark 'Hearing Aid Centre' is a well known mark and therefore, the plaintiffs' have an exclusive proprietary right over the said mark in respect of said goods and services by virtue of continuous 36 years user of the mark.
2.2. The plaintiffs came to know that the defendant is indulged in retail marketing of Hearing Aids and Apparatus under one deceptively similar name 'Afru Hearing Aid Centre' and it nearly resembles to the plaintiffs' registered trademark 'Hearing Aid Centre'. The defendant's deceptive mark 'Afru Hearing Aid Centre' is likely to deceive and cause confusion among the traders and consuming public of Hearing Aid Apparatus and thereby the defendant is using the deceptively similar mark to their goods and services. The Adoption of deceptively similar name 'Hearing Aid Centre' with prefix of 'Afru' as like that of the plaintiffs by the defendant itself is the proof that what kind of popularity the plaintiffs are enjoying for their registered trademark 'Hearing Aid Centre'. The defendant has adopted the mark 'Afru Hearing Aid Centre' with commercial dishonesty to look like to that of the plaintiffs' registered trademark 'Hearing Aid Centre' with ulterior intention to reap the harvest of goodwill earned by the plaintiffs during the course of their business in the trade 'Hearing Aids and Apparatus'. Further, the plaintiffs are the prior user of the registered trademark 'Hearing Aid Centre' and the defendant has dishonestly adopted the trademark 'Hearing Aid Centre' but with prefix 'Afru'.
2.3. Priority in adoption and use prevails over priority in registration' emphasized under Section 34 of the Trade Mark Act 1999. The defendant is using the trademark from 1st September, 2013 which is subsequent to the adoption of the 'Hearing Aid Centre' by the plaintiff in the year 1981. Therefore, the conduct of the defendant amount to 'passing off the goods and services of the defendant as like that of the plaintiffs and also amounts to fraud on the plaintiffs as well as the consumer public because the deceptive mark 'Hearing Aid Centre' with prefix 'Afru' adopted by the defendant is exact reproduction and deceptively similar to the pla
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