Pathanjali Ayurved Limited Represented by its Director, New Delhi vs Arudra Engineers Private Limited Represented by its Managing Partner R. Natraj

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2021 Supreme(Mad) 550

IN THE HIGH COURT OF JUDICATURE AT MADRAS
R. SUBBIAH, C. SARAVANAN, JJ.
M/s. Pathanjali Ayurved Limited Represented by its Director, New Delhi & Another - Appellant
Versus
Arudra Engineers Private Limited Represented by its Managing Partner R. Natraj - Respondent
O.S.A. No. 169 of 2020 & C.M.P. Nos. 8510, 9187 & 9188 of 2020
Decided On : 02-02-2021

Advocates Appeared:
For the Appellants :C. Aryama Sundarm, Senior Counsel assisted by Rohini Musa, Simranjeeth Singh, M/s. P. Giridharan, Sathish Parasaran, Senior Counsel assisted by Simranjeeth Singh, M/s. P. Giridharan, S. Santhosh, Advocates.
For the Respondent:P.R. Raman, Senior Counsel, C. Seethapathy, Advocate.

Headnote:(A) Trade Marks Act, 1999 - Section 29(4) - The appeal involved a challenge to the interim injunction granted to restrain the appellant from using the trademark 'Coronil', claimed by the respondent. The plaintiff alleged infringement of its registered trademarks due to the similarity with the defendant's 'Coronil Tablet.' The court found that: (i) The plaintiff's registered trademarks were composite marks, and it did not have separate registration for 'Coronil.' (ii) The defendants' product was unrelated, fulfilling the requirement under Section 29(4) and showing no likelihood of confusion. (Paras 1, 11, 39, 84)

(B) Reputation in India - The court ruled the plaintiff had not demonstrated sufficient reputation of the mark 'Coronil' to claim infringement under Section 29(4) as required for a well-known trademark. (Paras 50, 82)

(C) Likelihood of Confusion - The Court emphasized the necessity of similarity in the use of marks for establishing any infringement, aligning with the 'anti-dissection rule.' (Paras 79, 84)

(D) The balance of convenience and irreparable harm were factors not satisfied, leading to the quashing of the injunction order of the single judge. (Paras 72, 86)

Result: Appeal allowed.

Table of Content
1. prayer for appeal and procedural background. (Para 1 , 2)
2. plaintiff's use and reputation of trademark. (Para 3 , 4)
3. filing of interim injunction and allegations by plaintiff. (Para 5 , 6 , 7)
4. defendant's arguments against allegations and trademark usage. (Para 8 , 9 , 10)
5. court's analysis of trademark ownership. (Para 11)
6. parameters for determining trademark infringement. (Para 12 , 13 , 14)
7. examination of common law and statutory provisions on trademark. (Para 15 , 16 , 17 , 18)
8. evaluation of evidence for trademark reputation. (Para 19 , 20 , 21)
9. discussion on due cause and unfair advantage. (Para 22 , 23 , 24)
10. deliberation on balance of convenience for injunction. (Para 25 , 26 , 27)
11. summation of court's decision on injunction. (Para 28 , 29 , 30 , 31)
12. court's conclusion on substantive rights and trademark entitlement. (Para 50 , 52 , 53 , 54 , 55 , 56 , 57 , 58 , 59 , 60 , 61 , 62 , 63 , 64)
13. emphasis on the entirety of trademark registration. (Para 65 , 66 , 67 , 68 , 69 , 70)
14. criteria for likelihood of consumer confusion. (Para 71 , 72 , 73 , 74 , 75 , 76 , 77)
15. final remarks on trademark protection and injunction. (Para 78)

JUDGMENT :

R. Subbiah, J.

Prayer: Original Side Appeal (OSA) filed under Order XXXVI Rule 9 of the ORIGINAL SIDE RULES of the Madras High Court, read with Clause 15 of the amended Letters Patent, 1865 and read with Section 13 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts (Amendment) Act, 2018, against the order and decree dated 06.08.2020 passed by the learned Single Judge, made in O.A.No.258 of 2020 in C.S.No.163 of 2020 on the file of this Court.

This appeal has been filed as against the order dated 06.08.2020 passed in O.A.No.258 of 2020 in C.S.No.163 of 2020, whereby the learned Single Judge made the interim order granted on 17.07.2020 absolute and restrained the appellant/defendants herein from infringing the respondent/plaintiff’s registered trademark bearing the name “Coronil” and from using the objectionable trademark’s and/or deceptive variation of the applicant’s trademark singularly or in conjunction with any words or monogram/s/logo/s upon and in relation to their product/business in any manner whatsoever pending disposal of the suit.

2. The appellants are the defendants in the suit. The respondent-Company is the plaintiff, which instituted the suit. For the sake of convenience, the parties herein are referred to as the plaintiff and the defendants as ranked in the suit.

3. The case of the plaintiff is that it is a private limited company registered under the Companies Act, 1956. They are carrying on business of chemical cleaning and manufacturing of material handling system and polymeric epoxies for various factories in India and abroad. They have been carrying on such business for more than 20 years and had gained significant reputation within the industrial fraternity. They have registered the mark ‘Coronil-213 SPL’ and ‘Coronil-92B’ in the year 1993. They have also renewed the registration of the trade mark and currently, the trademark is valid until 2027. The product of the plaintiff, namely Coronil is a chemical agent for sanitising and cleaning heavy industrial machinery and containment units at factories with minimal corrosion, thus, reducing the overall depreciation in the value of units during the cleaning process. Some of the clients of the plaintiff are Bharat Heavy Electricals Limited, NTPC Limited, Reliance Industries Ltd., Indian Oil Corporation, National Productivity Council, etc. The trade mark Coronil has been put to use continuously for many years since its inception in respect of its reputation as an industrial cleaning agent, which has resulted in the product receiving loyal and extensive patronage from numerous customers all over the world, including India.

4. While so, during June 2020, the plaintiff came to know through newspapers that the defendants have been marketing thei

Click Here to Read the rest of this document

2021 Supreme(Mad) 550

Cases Referred (14)