2021 Supreme(Mad) 1529

IN THE HIGH COURT OF JUDICATURE AT MADRAS
G. JAYACHANDRAN, J.
N. Ranga Rao & Sons Private Ltd., Chennai – Appellant
Versus
Sree Annapoorna Agro Foods, Erode – Respondent
C.S. No. 259 of 2017
Decided on : 17-08-2021

Point of law :Intellectual properties – Copy right of trade mark - Evidence of turn over and expenses over advertisement are tested for reputation. For detrimental of reputation and dilution of distinctive character independent evidence is required. The defendant continuous use of the mark “CYCLE” for its edible oil prior to the plaintiff dis-entitles the plaintiff from seeking the relief of injunction either on the ground of infringement or passing off.

Headnote:

Trade Marks Act, 1999 - Sections 27, 28, 29,, 2 (1) (zg), 29(4) , 29(2) , 134 and 135 - Civil Procedure Code,1908 - Order VII, Rule 1 - Suit is filed for permanent injunction restraining - Blending the perfumes and fragrances - Whether the defendant is passing off its goods using the trademark CYCLE as and for the goods of the plaintiff under the registered trademark and copyrighted artistic work CYCLE - Whether defendant is manufacturing any products under the trademark CYCLE with respect to FOOD PRODUCTS falling under Class 29 or Class 30 of Trademark Rules - Whether the defendant adopted trademark CYCLE for edible oils in and whether the defendant is continuously using the trademark Cycle for edible oils - Whether plaintiff’s agarbthies/incense sticks and defendant’s products under trademark CYCLE allied or cognate goods - Whether the defendant’s use of the trade mark CYCLE is detrimental to use of plaintiff’s trademark CYCLE or to the distinctive character and repute of the plaintiff’s trademark - Whether the plaintiff’s trademark CYCLE has such reputation so as to prevent defendant from using dissimilar goods other than those used by plaintiff and whether the trademark CYCLE has come to be associated with plaintiff if used in any product - Whether plaintiff is entitled to the relief of rendition of accounts of profits earned by the defendant through the infringing use of the mark CYCLE - Whether the plaintiff is entitled to surrender of entire stock of unused offending lables, blocks and dyes bearing the offending Trade Mark CYCLE for destruction - Whether plaintiff is entitled to costs of the suit - To what other reliefs the plaintiff is entitled to - Strong brand value and tremendous reputation and good will - Plaintiff is a leading manufacturer and supplier of incense sticks and other allied products - They are engaged in the business of manufacturing and selling incense sticks/Agarbathies since 1948 and they are the global market leader in Incense/Agarbathies and Dhoops - Plaintiff firm initially started as a proprietary concern transformed into a partnership concern and later a private limited company - period of several decades in respect of various products ranging from cosmetics to food products - Their products under the brand umbrella “CYCLE” have gained a strong brand value and tremendous reputation and good will - They are exporting the incense sticks to over 40 countries - Business started by Rango Rao is now managed by third generation - ownership of the trade mark held by the firm also transferred in favour of the plaintiff company - Trade mark “CYCLE” was adopted in the year 1954 by the plaintiff’s predecessor –

Finding of the Court:

, Court, while considering the averments of infringement to test detrimental to reputation and dilution of distinctive character has to look at whether the word had acquired in trade a secondary signification differing from its primary one and defendant attempts to sell his own goods under the pretence, that are the goods of another man - Plaintiff for that purpose should prove a distinctive character in its trade mark, which likely to be diluted - Present case, unlike Paper Mills Limited case, there is no evidence to show that defendant will gain unfair advantage by using mark “CYCLE” per se for its edible oil or such use will be detrimental to distinctive character or reputation to the plaintiff - Complete lack of evidence on the part of plaintiff to establish that its reputation will be diluted or will be detrimental to its distinctive character - Evidence of turn over and expenses over advertisement are tested for reputation - For detrimental of reputation and dilution of distinctive character independent evidence is required –

Result:Civil Suit is dismissed