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2020 Supreme(Mad) 1484
IN THE HIGH COURT OF JUDICATURE AT MADRAS
C.V. KARTHIKEYAN, J.
Ashique Exports (P) Ltd., Represented by its Managing Director, P.C. Thahir - Appellant
Versus
K.K. Suresh Trading as M/s. Shastha Industries, Kerala & Others - Respondent
C.S. No. 643 of 2012
Decided On : 04-11-2020
For the Appellant :Perumbulavil Radhakrishnan, Advocate.
For the Respondent:Subha Shiny, Raveekumar, Advocates.
The importance of providing admissible evidence to establish prior usage of a trademark and the requirement for the cause of action for passing off to arise within the court's jurisdiction.
Headnote:
Trade Mark - Infringement - Sections 134 & 135 of Trade Marks Act, 1999 - The court discussed the issues of prior usage of the trademark 'Super Wash - 555' and passing off of the defendant's products as those of the plaintiff. The court found that the plaintiff failed to prove prior usage of the trademark and that the defendant was not marketing the products within the court's jurisdiction, leading to the dismissal of the suit.
Fact of the Case:
The plaintiff sought permanent injunction against the defendants for infringing the trademark 'Super Wash - 555' and passing off the defendant's washing soap as their own. The plaintiff claimed to have adopted the trademark and earned goodwill, while the defendants claimed to have used the mark honestly prior to the plaintiff.
Finding of the Court:
The court found that the plaintiff failed to prove prior usage of the trademark and that the defendant was not marketing the products within the court's jurisdiction, leading to the dismissal of the suit.
Issues: The issues included whether the plaintiff was the prior user of the trademark, whether the defendants were passing off their products as those of the plaintiff, and whether the plaintiff was entitled to the reliefs sought.
Ratio Decidendi: The plaintiff failed to provide admissible evidence to establish prior usage of the trademark, and the defendant was not marketing the products within the court's jurisdiction, leading to the dismissal of the suit.
Final Decision: The suit was dismissed with no order as to costs.
JUDGMENT :
(Prayer: This Civil Suit is filed under Order IV Rule 1 of Original Side Rules read with Sections 134 & 135 of Trade Marks Act, 1999 praying for the following reliefs:
(a) granting permanent injunction restraining the defendants by themselves, their servants or agents or anyone claiming through them from in any manner infringing the plaintiff’s Trade Mark “SUPER WASH” and “Super Wash – 555” Washing Soap by using the similar or deceptively similar Trade Mark on the wrapper together with any write up or any other representation or words which are in any manner identical to and deceptively similar with the Trade Mark of the plaintiffs on the defendant’s products;
(b) granting permanent injunction restraining the defendants by themselves, their servants or agents or anyone claiming through them from in any manner passing off the defendant’s washing soap “Super Wash” Washing Soap bearing the offending trade mark with identical and/or deceptively similar colour scheme, get up and write up as and for the celebrated washing soap of the plaintiff bearing the trade mark “Super Wash – 555” Washing Soap, with peculiar get up and write up either by manufacturing or selling of offering for sale or in any manner advertising the defendant’s offending product ‘Super Wash’ to the public;
(c) directing the defendants to surrender to the plaintiff the entire stock of unused offending ‘Super Wash’ washing soap wrappers together with blocks and dyes for destruction;
(d) directing the defendants to render a true and faithful account of the profits earned by it through the sale of the offending bath soap bearing the offending trade mark ‘Super Wash’ wrapper/carton and directing payment of such profits to the plaintiffs for the infringement and passing off committed by the defendants; and
(e) directing to the defendant to pay the plaintiff the costs of the suit.)
1. The plaintiff M/s. Ashique Exports (P) Ltd., a company incorporated under the Companies Act 1956 has filed the suit seeking a Judgment and Decree for permanent injunction against the defendants, Suresh K.K., Trading as M/s. Shastha Industries, Ernakulam, Kerala and S&B Industries, represented by its Proprietor Suresh K.K., at Ernakulam, Kerala and Sastha Traders, represented by its Proprietor Suresh K.K., Ernakulam, Kerala, from infringing the trademark of the plaintiff “SUPER WASH” and “Super Wash –555”, Washing Soap by using a similar and deceptively similar Trademark and for permanent injunction from passing off the products of the defendants Washing Soap ‘Super Wash’ as if they are the products of the plaintiff and for consequential reliefs and for costs.
2. In the plaint, it had been stated that the plaintiff is a company manufacturing and marketing, among other products, soaps and detergents for several years and had adopted the word “Super Wash - 555” in respect of Washing Soaps manufactured and marketed by them. They had also applied for registration of the Trademark “Super Wash - 555” on 24.03.1997 and Trademark Application No. 749397 had been allocated by the Trademark Registry. The mark was registered by certificate dated 28.03.2008 with effect from 24.03.1997. They also, in the course of their business, adopted the Trademark “Super Wash - 555 Premium Bar Soap” and commenced manufacturing and marketing the same from 01.01.1997. It had been stated in the plaint that the plaintiff had earned enormous goodwill and reputation. The turnover of the plaintiff in the financial year 2011-2012 was Rs.77,15,673/-. The plaintiff had occasion to approach this Court earlier to protect its Trademark and had filed C.S.No. 665 of 2008. It had been further stated in the plaint that the defendants had commenced using an identical soap wrapper consisting of the words ‘Super Wash’. It is stated that the wrapper of the defendants is very identical to that of the plaintiff. It had been stated that the defendants have marketed their washing soap under the very same name ‘Super Wash’.
3. In the plaint
