Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2021 Supreme(Mad) 870

High Court of Judicature at Madras
Case No : C.S. No. 164 of 2017
Judges: THE HONOURABLE MR. JUSTICE C.V. KARTHIKEYAN
Parties : M/s. S.N.R. DHALL MILL, A registered partnership firm represented by its Managing Partner R. Surendran Versus M/s. Kaleesuwari Refinary Private Limited, Chennai
Date of Judgment : 26-04-2021

Appearing Advocates: For the Plaintiff:Ravikumar Paul, Senior Counsel for M/s. Mission Legal, Ramesh Ganapathy, Advocates. For the Defendant:P.S. Raman, Senior Counsel for M/s. Surana & Surana, G. Kalyan Jhabakh, Advocates.

Point of Law: Registry is directed and delegated by Court to determine the costs as per the Bill / Memo of Costs submitted by the defendant in accordance with Section 35 of CPC, as amended by the Commercial Courts Act, 2015.

Headnote:
Trade Marks Act, 1999 - Sections 17(2), 28, 29, 29 (3) , 13 , 134 & 135 - Trade and Merchandise Marks Act, 1958 - Section 17 - English Act - Section 14 - Civil Procedure Code,1908 - Section 35 - Permanent injunction - Infringement of trademark by using the words “GOLD WINNER - Whether defendant is estopped from claiming any right over mark Gold Winner under Class 30, in view of withdrawal of their earlier objection - Suit had been filed by plaintiff registered partnership firm represented by its Managing Partner Sections 28, 29, 134 & 135 of Trademarks - Original Side Rules of Madras High Court, seeking a Judgement and Decree against defendant Private Limited company incorporated under Companies Act - Permanent injunction restraining defendant from infringing Trademark of ‘Gold Winner’ of plaintiff by using words “Gold Winner” is similar to registered Trademark of plaintiff in Registration - Varieties and restraining defendant from passing off products as if they are products of plaintiff Trademark “Gold Winner” and for a direction against defendant to pay a sum - Consequential reliefs in nature of a preliminary decree directing defendant to render accounts of profits and to deliver to plaintiff for destruction
Finding of the court: Colour combination is different. impression on packet is different - Size of packaging is different - They both operate in different markets and different spheres - Mode of purchasing goods and mode of placing orders for purchase re also different - Customers of both plaintiff and defendant belong to different classes - Wholesale purchaser can never get his Toor Dhall from the defendant - Retail purchaser can never get his Toor Dhall plaintiff - Quantity of Toor Dhalls in packaging of both products are different - Plaintiff would require a gunny bag to pack wholesale quantity defendant would package their product in smaller sized covers, certainly not in gunny bags - Selling their Toor Dhall products in name Godl Winner, would neither amount to infringement of trademark of plaintiff nor can be categorised as passing off their products as if there are products of the plaintiff - Issue is answered against plaintiff and in favour of defendant – Court hold matters have moved towards realm of Authority where Exs. D 47 and D 52 have been filed and are pending - It would therefore be inappropriate on part of Court to dwelve deeply into aspects which are covered - Plaintiff in view of restrictions under Section 17(2) of Trade Marks Act, 1999, nor can it be imputed they are passing off their products as if they are products of plaintiff where it has been clearly held distribution channels and class of customers are totally different and packaging’s are different marks are both represented in a totally different manner, both with respect to writings and also with respect to colour combination there cannot be any cause for confusion
Result: Civil Suit is dismissed

Judgment :-

(Prayer: This Civil Suit is filed under Order VII Rule 1 of the Civil Procedure Code read with Order IV Rule 1 of the O.S. Rules read with Sections 28, 29, 134 & 135 of the Trademarks Act, 1999, for a Judgment and Decree against the defendant for the following reliefs:

(a) a permanent injunction restraining the defendant, its directors, all their principal officers, staff, men, agent, servants, successors, assigns in business, representatives and any other person from infringing the trademark by using the words “GOLD WINNER” togetheror any other word/words/device that are identical or deceptively similar to the said registered Trademark of the plaintiff having Registration No. 1232740 in class 30 in respect of dhall varieties and thereby restraining them from claiming any right through or under the defendant from in any manner infringing the registered trademark and passing off its products as that of the plaintiff’s under trademark “GOLD WINNER”;

(b) the defendant be ordered and directed to pay to plaintiff a sum of Rs.10,00,000/- (Rupees Ten Lakhs only) by way of damages;

(c) a preliminary decree be passed in favour of the plaintiff directing the defendant to render a true and faithful accounts of all profit made by them, using the plaintiff’s said Trademark in particular the word “GOLD WINNER”and a final decree be passed in favour of the plaintiff for the amount of profit thus found to have been made by the defendant, together with interest, after the defendant has rendered accounts;

(d) the defendant be directed to deliver-up to the plaintiff for destruction, all labels, all other print materials, stickers, signage, visiting cards, letter heads, catalogues, pamphlets, broachers, all other advertising and promotional material, all stationary, and such other material used for infringing and passing off; and

(e) for the costs of the suit.)

1. The suit had been filed by the plaintiff M/s. S.N.R. Dhall Mill, a registered partnership firm represented by its Managing Partner R.Surendran, under Sections 28, 29, 134 & 135 of the Trademarks Act, 1999 read with the relevant provisions of the Code of Civil Procedure and the Original Side Rules of the Madras High Court, seeking a Judgement and Decree against the defendant, M/s. Kaleesuwari Refinary Private Limited, a company incorporated under the Companies Act, 1956 in the nature of permanent injunction restraining the defendant from infringing the Trademark of ‘Gold Winner’ of the plaintiff by using the words “Gold Winner” which is similar to the registered Trademark of the plaintiff in Registration No. 1232740 in class 30 in respect of dhall varieties and restraining the defendant from passing off their products as if they are the products of the plaintiff under the Trademark “Gold Winner” and for a direction against the defendant to pay a sum of Rs.10,00,000/- by way of damages and for consequential reliefs in the nature of a preliminary decree directing the defendant to render accounts of profits and to deliver to the plaintiff for destruction, all materials used for infringing the trademark and for passing off and for costs of the suit.

2. It had been stated that the plaintiff had adopted the Trademark “Gold Winner” in the year 1999 with respect to different varietiesof Dhall and flour preparations. The plaintiff claimed to be a leading manufacturer with respect to different varieties of Dhall and flour preparations and have been using the Trademark “Gold Winner” continuously from 1999. The plaintiff is a registered dealer under the Tamil Nadu Value Added Tax Act 2006 and is also registered with the Tamil Nadu Food Safety and Drug Administration Department.

3. The plaintiff claimed they had conceived and adopted the Trademark “Gold Winner”since 01.06.1999. They had also obtained registration for the mark “Gold Winner” (label) under A.No. 1232740 in class 30 wherein the words “Gold Winner” is prominently shown along with a device of a Man. During the registration, a disclaimer

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