2021 Supreme(Mad) 406

IN THE HIGH COURT OF JUDICATURE AT MADRAS
C.V. KARTHIKEYAN, J.
M/s. K.A.S. Zainulabdin & Co. – Plaintiff
Versus
M/s. Murthy Lungi Company, Komarapalayam & Others – Defendants
C.S. No. 572 of 2003
Decided On : 18-01-2021

The delay in instituting the suit is fatal to the case of the plaintiff. The plaintiff had not even whispered about the reply notice issued by the defendant. This is very crucial since the defendants had asserted a right to market their Lungi products under the name ‘Lock Brand’. They had rejected the call of the plaintiff to cease and desist from using the said name. The suppression of the said stand of the defendants, taken in juxtaposition with the averment in the plaint that the defendants had stopped marketing their products under the name ‘Lock Brand’, which averment is obviously false, are significant aspects to reject the reliefs sought by the plaintiff. The plaintiff had not taken any steps to institute a suit to protect their Trade Mark. The plaintiff cannot claim innocence and ignorance and seek indulgence.

Headnote:

Trade Mark - Infringement - Trade and Merchandise Marks Act 1958, Copy Right Act 1957 - Section 105, 106, 55, 62 - The court dismissed the suit filed under Sections 105 & 106 of the Trade and Merchandise Marks Act, 1958 and Sections 55 and 62 of the Copy Right Act 1957, seeking a Judgment and Decree restraining the defendants from infringing the registered Trade Mark ‘Lock Brand’ with the device of lock by any other similar mark under the name ‘Lock Brand’ and for permanent injunction restraining the defendants from infringing the Copy Right of the plaintiff on the artistic work on the label of the registered Trade Mark ‘Lock Brand’ and for a permanent injunction restraining the defendants from passing off their Lungi products as that of the plaintiff and for accounts and consequential reliefs and for costs. The plaintiff, M/s. K.A.S., Zainulabdin and Company is a partnership firm. The first defendant M/s. Murthy Lungi Company, is also a partnership firm. The second and third defendants are the partners of the first defendant. In the plaint, it had been stated that the plaintiff is a leading and established manufacturer and marketer in Lungis and other textiles. They market their Lungi products under the brand ‘Lock Brand’. It is a label containing the device of a lock and the word ‘Lock Brand’. The plaintiff claimed that they have adopted this mark from the year 1950. They had also applied for registration under class 24 relating to Lungi and had obtained registration under No. 237944. It had been stated that the registration is still valid. It was also stated that they have spent considerable amount of money towards advertisement and their turnover reflected the reputation built by them. The defendants filed a written statement in which they have claimed that they have been marketing their Lungi products under the name Lock Brand from the year 1985 continuously. They have also given their sales turnover figures from the year 1985 onwards and it is seen that their sales turn over for the financial year 2001-2002 was Rs.1,58,26,680/-. It was stated that the defendants have honestly adopted the Trade Mark ‘Lock Brand’. It was stated that there are significant differences between the two labels. The lock shown in the defendants’ label is a Godrej model while the plaintiff’s had a Dindigul model. The lock of the plaintiff had been inserted in the middle of the label, while the lock of the defendants had been inserted at the left end of the label. The name of the Company is also clearly written at the bottom. It was stated that the defendants have honestly adopted the Trade Mark. The firm has also been registered with the Sales Tax authorities. It was stated that they received a notice dated 10.01.1991 from the plaintiff and it was only then that they came to know about the business of the plaintiff. They issued a reply on 04.02.1991 and in the said reply, they had rejected the demand to cease and desist from marketing Lungi products under the brand name ‘Lock Brand’. This reply was also received by the plaintiff. The plaintiff however issued further notices on 11.03.1991 and 16.03.1991. They had suppressed in the plaint, the reply notice issued by the defendants. Thereafter, the plaintiff issued a further notices on 12.04.1993. Again the defendants issued reply notice dated 17.04.1993. The defendants pointed out that two years had lapsed from the date of the previous notices and the defendants have been marketing their products continuously. It had been stated that the said reply has also been suppressed by the plaintiff in the plaint. A further notice was issued by the plaintiff on 20.07.1998 for which a reply was issued on 03.08.1998. The defendants had also applied for registration of the mark Lock Brand and the matter was also advertised in the Trade Mark Registry. The plaintiff had entered opposition proceedings and even while the said proceedings were pending, the plaintiff had filed the present suit. The defendants denied that they had adopted the mark ‘Lock Brand’ to encroach upon the goodwill and reputation of the plaintiff. The defendants also complained about the inordinate delay in filing the suit in the year 2003. Notices were exchanged in the years 1991 and 1993. The defendants further denied that all other averments in the plaint and stated that they are doing their business honestly. They therefore stated that the suit should be dismissed. The court dismissed the suit on the ground of suppression of material documents particularly the reply notices issued on behalf of the defendants and on the ground of delay. The plaintiff had not even whispered about the reply notice issued by the defendant. This is very crucial since the defendants had asserted a right to market their Lungi products under the name ‘Lock Brand’. They had rejected the call of the plaintiff to cease and desist from using the said name. The suppression of the said stand of the defendants, taken in juxtaposition with the averment in the plaint that the defendants had stopped marketing their products under the name ‘Lock Brand’, which averment is obviously false, are significant aspects to reject the reliefs sought by the plaintiff. The plaintiff had not taken any steps to institute a suit to protect their Trade Mark. The plaintiff cannot claim innocence and ignorance and seek indulgence. The court held that the delay in instituting the suit in the instant case is fatal to the case of the plaintiff. There is absolutely no reason for not instituting the suit in the year 1991 or atleast in the year 1993. The plaintiff had issued a further notice in the year 1993. The defendants again replied stating that they would not comply with the demands of the plaintiff. The replies issues by the defendants have been suppressed from the purview of the Court. In the plaint, it had been merely stated that the defendants have stopped manufacturing and marketing Lungi Products under the name ‘Lock Brand’, This statement in the plaint is not correct. The plaintiff is in the very same business. They should be aware of their trade rivals and the brand names under which they are marketing their products. The plaintiff cannot claim innocence and ignorance and seek indulgence. The court held that the plaintiff cannot get any relief with respect to passing off also. The court also held that the plaintiff does not have jurisdiction to examine the issues raised in the plaint and the suit is dismissed on that ground also. The suit was dismissed with costs.

Fact of the Case:

The plaintiff, M/s. K.A.S., Zainulabdin and Company, a leading and established manufacturer and marketer in Lungis and other textiles, filed a suit seeking a Judgment and Decree restraining the defendants from infringing the registered Trade Mark ‘Lock Brand’ with the device of lock by any other similar mark under the name ‘Lock Brand’ and for permanent injunction restraining the defendants from infringing the Copy Right of the plaintiff on the artistic work on the label of the registered Trade Mark ‘Lock Brand’ and for a permanent injunction restraining the defendants from passing off their Lungi products as that of the plaintiff and for accounts and consequential reliefs and for costs. The defendants claimed that they have been marketing their Lungi products under the name Lock Brand from the year 1985 continuously and honestly adopted the Trade Mark ‘Lock Brand’. They also complained about the inordinate delay in filing the suit in the year 2003. Notices were exchanged in the years 1991 and 1993. The defendants further denied all other averments in the plaint and stated that they are doing their business honestly. The court dismissed the suit on the ground of suppression of material documents particularly the reply notices issued on behalf of the defendants and on the ground of delay.

Finding of the Court:

The court dismissed the suit on the ground of suppression of material documents particularly the reply notices issued on behalf of the defendants and on the ground of delay. The court held that the delay in instituting the suit is fatal to the case of the plaintiff. The plaintiff had not even whispered about the reply notice issued by the defendant. This is very crucial since the defendants had asserted a right to market their Lungi products under the name ‘Lock Brand’. They had rejected the call of the plaintiff to cease and desist from using the said name. The suppression of the said stand of the defendants, taken in juxtaposition with the averment in the plaint that the defendants had stopped marketing their products under the name ‘Lock Brand’, which averment is obviously false, are significant aspects to reject the reliefs sought by the plaintiff. The plaintiff had not taken any steps to institute a suit to protect their Trade Mark. The plaintiff cannot claim innocence and ignorance and seek indulgence. The court held that the plaintiff cannot get any relief with respect to passing off also. The court also held that the plaintiff does not have jurisdiction to examine the issues raised in the plaint and the suit is dismissed on that ground also.

Issues: The issues framed for trial were: (1) Whether the plaintiff is entitled to claim exclusive right over the trademark “Lock Brand”?; (2) Whether the use of the trademark 'Lock Brand' by the defendant would cause deception and confusion among the public?; (3) Whether the plaintiff is entitled for relief of infringement of the trademark?; (4) Whether the plaintiff is entitled for permanent injunction restraining the defendant from passing off its goods as that of the plaintiff?; (5) Whether the defendants are liable to render a true and faithful account of the profits earned by them through the sale of lungi products bearing the offending Trade Mark “Lock Brand” with the device of lock and directing payment of such profits to the plaintiff by way of damages for passing off committed by the defendants?; (6) Whether the defendants are liable to surrender to the plaintiff the entire stock of unused offending goods with Trade Mark “Lock Brand” with the device of lock together with cartons, labels, brochures, printing blocks, containers, boxes, etc., bearing the offending Trade Mark for destruction; (7) To whatever reliefs the plaintiff is entitled to?; (8) Whether the plaintiff has given implied consent for the user of the Trade Mark by the defendants?; (9) Whether this Court has jurisdiction to entertain the suit?; and (10) Whether the defendants have infringed the plaintiff’s Trade Mark?

Ratio Decidendi: The delay in instituting the suit is fatal to the case of the plaintiff. The plaintiff had not even whispered about the reply notice issued by the defendant. This is very crucial since the defendants had asserted a right to market their Lungi products under the name ‘Lock Brand’. They had rejected the call of the plaintiff to cease and desist from using the said name. The suppression of the said stand of the defendants, taken in juxtaposition with the averment in the plaint that the defendants had stopped marketing their products under the name ‘Lock Brand’, which averment is obviously false, are significant aspects to reject the reliefs sought by the plaintiff. The plaintiff had not taken any steps to institute a suit to protect their Trade Mark. The plaintiff cannot claim innocence and ignorance and seek indulgence. The court held that the plaintiff cannot get any relief with respect to passing off also. The court also held that the plaintiff does not have jurisdiction to examine the issues raised in the plaint and the suit is dismissed on that ground also.