Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2021 Supreme(Mad) 338

IN THE HIGH COURT OF JUDICATURE AT MADRAS
C.V. KARTHIKEYAN, J.
Manohar Singh Proprietor trading as M/s. Singh Mehandi Industries, Bengaluru – Appellant
Versus
Vimal Sehnaaz (India) Samdar Castle, Chennai & Others – Respondent
O.A. Nos. 359, 360, 361 & 362 of 2020 & A. Nos. 423, 424 & 425 of 2021 in C.S. (Comm. Div) No. 203 of 2020
Decided On : 01-04-2021

Advocates Appeared:
For the Applicants :Rajeev Kumar Jain, Senior Counsel, Vivek Menon, R. Priyakumar, Advocates.

Point of Law: A claimant may fail to make out a case of infringement of a trade mark for various reasons and may yet show that by imitating the mark claimed as a trademark, or otherwise, the Defendant has done what is calculated to pass off his goods as those of the claimant. A claim in "passing off' has generally been added as a second string to actions for infringement, and has on occasion succeeded where the claim for infringement has failed

Headnote:
Copyright Act, 1957 - Trade Marks Act, 1999 - Civil Procedure Code, 1908 - Order XIV - Rule 8 of Original Side Rules read with Order XXXIX Rule 1 & 2 - Copyright - Plaintiff's copyright over and in respect of artistic work Bansuri - Application praying not be pleased to grant an interim injunction restraining respondents/defendants - Application filed praying that this Court should not be pleased to grant an interim injunction restraining respondents/defendants, their men, assigns, servants, agents, officers, distributors, representatives, or anyone claiming through or under them from manufacturing, selling, offering for sale and distributing mehandi cones and or any other cosmetic products using mark 'BANSURi” and /or any other mark which is deceptively and/or phonetically and/or visually similar to that of the plaintiff's mark Bansuri pending disposal of above suit and an ad interim injunction pending disposal of the present application - Claiming through or under them from in any way or manner infringing plaintiff's registered trademark Bansuri by using mark 'BANSURi” or any other mark which is deceptively similar and/or identical and /or phonetically similar as that of plaintiff's registered trademark Bansuri in any way or manner whatsoever pending disposal of the above suit and an ad interim injunction pending disposal of present application –
Finding of the court: Court hold that owing to their continuous usage of mark 'BANSURI', plaintiff has made out a prima facie case and this is strengthened by their registration both under Trade Marks Act, 1999 and under Copyright Act, 1957 - Any infringement necessarily will have to be struck down by Court - It would only be appropriate that Court also recognizes fact that plaintiff has been in the business for a considerable period of time - Contention of the 3rd defendant that they have been in business earlier to that of plaintiff is a fact which is to be asserted and decided during cross-examination - In view of above reasons, particularly in view of fact that 3rd defendant has moved very close to colour scheme and trade dressage of plaintiff, as is evident from a casual glance of pictorial material used by 3rd defendant, orders of interim injunction is made absolute pending disposal of suit - Applications filed by 3rd defendant to vacate the order of interim injunctions granted in O.A are dismissed
Result: Original Applications allowed.

JUDGMENT :-

(Prayer in O.A.Nos.359 of 2020: This Original Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 1 & 2 of C.P.C., praying that this Court should not be pleased to grant an interim injunction restraining the respondents/defendants, their men, assigns, servants, agents, officers, distributors, representatives, or anyone claiming through or under them from in any way or manner passing off and enabling others to pass off their products by using the mark 'BANSURi” or any other mark and /or getup and/or colour combination that is deceptively and/or phonetically and/or visually similar to that of the plaintiff's mark Bansuri in any way or manner whatsoever pending the disposal of the above suit and an ad interim injunction pending the disposal of the present application.

O.A.Nos.360 of 2020: This Original Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 1 & 2 of C.P.C., praying that this Court should not be pleased to grant an interim injunction restraining the respondents/defendants, their men, assigns, servants, agents, officers, distributors, representatives or anyone claiming through or under them from in any way or manner infringing the plaintiff's copyright over and in respect of his artistic work Bansuri by use of any work and / or mark which is identical and/or deceptively similar to the artistic work of the plaintiff pending the disposal of the above suit and an ad interim injunction pending the disposal of the present application.

O.A.Nos.361 of 2020: This Original Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 & 2 of C.P.C., praying that this Court should not be pleased to grant an interim injunction restraining the respondents/defendants, their men, assigns, servants, agents, officers, distributors, representatives, or anyone claiming through or under them from manufacturing, selling, offering for sale and distributing mehandi cones and or any other cosmetic products using the mark 'BANSURi” and /or any other mark which is deceptively and/or phonetically and/or visually similar to that of the plaintiff's mark Bansuri pending the disposal of the above suit and an ad interim injunction pending the disposal of the present application.

O.A.Nos.362 of 2020: This Original Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 & 2 of C.P.C., praying that this Court should not be pleased to grant an interim injunction restraining the respondents/defendants, their men, assigns, servants, agents, officers, distributors, representatives, or anyone claiming through or under them from in any way or manner infringing plaintiff's registered trademark Bansuri by using the mark 'BANSURi” or any other mark which is deceptively similar and/or identical and /or phonetically similar as that of the plaintiff's registered trademark Bansuri in any way or manner whatsoever pending the disposal of the above suit and an ad interim injunction pending the disposal of the present application.

A.No.423 of 2021 in O.A.No.359 of 2020: This Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 4 of C.P.C., praying to vacate the interim injunction granted in O.A.No.359 of 2020 in C.S.No.203 of 2020 Order dated 02.09.2020.

A.No.424 of 2021 in O.A.No.362 of 2020: This Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 4 of C.P.C., praying to vacate the interim injunction granted in O.A.No.362 of 2020 in C.S.No.203 of 2020 Order dated 02.09.2020.

A.No.425 of 2021 in O.A.No.360 of 2020: This Application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rule 4 of C.P.C., praying to vacate the interim injunction granted in O.A.No.360 of 2020 in C.S.No.203 of 2020 Order dated 02.09.2020.)

Common Order

1. O.A.Nos.359 to 362 of 2020 have been filed by the plaintiff in the suit seeking an order of i

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2021 Supreme(Mad) 338

Cases Referred (5)