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IN THE HIGH COURT OF JUDICATURE AT MADRAS
C.V. KARTHIKEYAN, J.
Gem Edible Oil Private Limited, Represented by its Managing Director, K.M. Chinnadurai, Coimbatore – Appellant
Versus
Carrying on business at; Gem Edible Oil Private Limited, Chennai – Respondent
C.S. No. 30 of 2020
Decided On : 01-04-2021
Trade Marks Act, 1999 – Sections 27, 134, 35 – Copyright Act, 1957 – Section 62 – Code of Civil Procedure, 1908 – Order VII Rule 1, Order IV Rule 1 – Original Side Rules of the Madras High Court – Commercial Courts Act, 2015 – Permanent Injunction – Suit had been filed under Sections 27, 134(1) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 read with relevant provisions of the Code of Civil Procedure, 1908 and the Original Side Rules of the Madras High Court and the Commercial Courts Act, 2015, seeking a judgment and decree against the defendant from infringing the artistic work and trade dress similar to the trademark of 'GEM'S GOLD' registered by the plaintiff and restraining the defendant from passing off their product as if they are the products of the plaintiff and for costs. – Plaintiff is a Company registered under the Companies Act, 1956, carrying on business since 2005 in the field of refining crude Sunflower Oil into refined Sunflower Oil and trading the refined Sunflower Oil in the market – Plaintiff imports huge quantity of crude Sunflower Oil from the International Oil Market and refine them into the refined Sunflower Oil and market them in the name and style of GEM'S GOLD. – Name GEM'S GOLD had been registered under the Trade Marks Act, 1999 in Certificate. – Plaintiff had also obtained necessary licenses from the Food Safety and Standards Authority of India and from the Department of Agriculture and Cooperation for refining import Crude Sunflower Oil into refined Sunflower and packing oil in the name and style of GEM'S GOLD and selling / trading the same across the country. –
Finding of the Court:
Plaintiff has registration for their trademark and registration from the statutory authorities for their business. – They have been using the trademark with the particular colour scheme and dressage continuously from the date of incorporation. – Defendant is a later entrant into the market. – It is also seen that the quality of the oil marketed by them is also not to the standard expected by the Food Safety Standards Authority of India. – If the general public were to be misled into thinking that the products of the defendant are actually the products of the plaintiff, then the reputation of the plaintiff would get seriously affected. – Court hold that the plaintiff has made out a strong case for grant of injunction protecting the trademark GEM'S GOLD. – Documents filed substantiate that the claim of the plaintiff is bonafide. – Defendant had not appeared before this Court even though summons had been served. – It is clear that they are not interested in participating in the judicial proceedings. – Registry is delegated by the Court to determine the costs as per the Bill of Costs submitted by the plaintiff in accordance with Section 35 of C.P.C., as amended by the Commercial Courts Act, 2015. – Plaintiff is specifically entitled to the fees and expenses of the witness, the legal fees and expenses incurred and for any other expenses incurred in connection with the judicial proceedings and also for recovery of the actual Court Fees paid into Court. –
Result: Order Accordingly
JUDGMENT :-
(Prayer: This suit filed under Order IV Rule 1 of Original Side Rules, Order VII Rule 1 of CPC read with Sections 27, 134(1) of the Trade Marks Act, 1999 and Section 62(2) of the Copyrights Act, and Section 7 Proviso 1 of the Commercial Court, Commercial Division and Commercial Appellate Division of the High Court Act, 2016, prayed for a judgment and decree against the defendant for,
a).permanent injunction restraining the defendant, their men, representatives, authorized persons, agents, staff or whomsoever claiming through or under the defendant from infringing the copyright of artistic work with deceptive and similar trade mark, trade dress, including words, pictures, layout design, label, packing material in the name and style of “CLASSIC GOLD” similar to the trade mark “GEM'S GOLD” registered by plaintiff.
b).permanent injunction restraining the defendant, their men representatives, authorised persons, agents, staff or whomsoever claiming through or under the defendant from using the deceptive and similar trade mark, trade dress, including words, pictures, layout, design, lable, packing material in the name and style of “CLASSIC GOLD” in any way identical or similar to the plaintiff's registered trade mark “GEM'S GOLD”.
c).permanent injunction restraining the defendant, their men, representatives, authorised person, agents, staff or whomsoever claiming through or under the defendant from infringing the plaintiff's registered trade mark of “GEM'S GOLD”.
d).permanent injunction restraining the defendant,their men, representatives, authorised persons, agents, staff or whomsoever claiming through under the defendant from passing off “GEM'S GOLD” being the registered trade mark by the plaintiff.
e).To pay the cost of the suit.)
1. The suit had been filed under Sections 27, 134(1) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 read with relevant provisions of the Code of Civil Procedure, 1908 and the Original Side Rules of the Madras High Court and the Commercial Courts Act, 2015, seeking a judgment and decree against the defendant from infringing the artistic work and trade dress similar to the trademark of 'GEM'S GOLD' registered by the plaintiff and restraining the defendant from passing off their product as if they are the products of the plaintiff and for costs.
2. The plaintiff is a Company registered under the Companies Act, 1956, carrying on business since 2005 in the field of refining crude Sunflower Oil into refined Sunflower Oil and trading the refined Sunflower Oil in the market. The plaintiff imports huge quantity of crude Sunflower Oil from the International Oil Market and refine them into the refined Sunflower Oil and market them in the name and style of GEM'S GOLD. The name GEM'S GOLD had been registered under the Trade Marks Act, 1999 in Certificate No.2962026. The plaintiff had also obtained necessary licenses from the Food Safety and Standards Authority of India and from the Department of Agriculture and Cooperation for refining import Crude Sunflower Oil into refined Sunflower and packing oil in the name and style of GEM'S GOLD and selling / trading the same across the country.
3. The plaintiff also designed an artistic work in a unique packing cover with particular colour scheme and created a distinct label and image and identity for the brand 'GEM'S GOLD'. The plaintiff claims to be the owner for the said label. The plaintiff also claims that they have built up substantial goodwill and reputation in the market.
4. The package of the plaintiff is given below:
“IMAGE”
5. The plaintiff came to know that the defendant had been selling Sunflower oil under the name 'CLASSIC GOLD' in a package which was found to be deceptively similar to that of the plaintiff.
6. The packing cover of the defendant is shown below:
“IMAGE”
7. It has been claimed that the defendant had adopted a similar package to encroach on the goodwill and reputation built by the plaintiff. It had been stated by the plaint
Point of law: Trade mark – copyright - Plaintiff has made out a strong case for grant of injunction protecting the trademark GEM'S GOLD. Documents filed substantiate that the claim of the plaintiff i....
After interim injunction passed by this Court defendants has stopped using trademark of plaintiff and he has sent a letter to plaintiff informing that he is not using trademark “SPS Gopal” any furthe....
The court applied the Parle principle for comparison of competing marks and found that the defendant's mark was deceptively similar to the plaintiff's mark, leading to infringement and passing off.
The court upheld that lack of deceptive similarity precludes claims of trademark infringement and passing off, necessitating proof of goodwill and likelihood of confusion.
Trademark infringement occurs when a competing mark creates a likelihood of confusion among consumers as to the source of goods; protection extends to trade dress when substantial similarities exist.
:TRADE MARK – COPYRIGHT - Defendant had encroached upon the plaintiff’s colour scheme and copyright. It would only be appropriate that the plaintiff’s copyright is protected.
Trademark infringement occurs when a mark is deceptively similar to a registered mark, leading to consumer confusion.
The essential feature in a Trade Mark has to be determined based on the evidence and usage of the Trade. The Court also emphasized that the registration of a Trade Mark shall confer upon the propriet....
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