A. D. Padmasingh Isaac, Trading as Aachi Spices and Foods, Chennai vs Sudali Aachi Provisions, Represented by its Partners, Muthumari Ammal & G. Iyyappan

Judicial Analysis Court Copy Headnote Facts Arguments Court observation

2021 Supreme(Mad) 1398

IN THE HIGH COURT OF JUDICATURE AT MADRAS
G. JAYACHANDRAN, J.
A.D. Padmasingh Isaac, Trading as Aachi Spices and Foods, Chennai & Another – Appellants
Versus
Sudali Aachi Provisions, Represented by its Partners, Muthumari Ammal & G. Iyyappan – Respondent
C.S. No. 558 of 2018 & A. No. 5136 of 2019
Decided on : 03-08-2021

Advocates:
Advocate Appeared:
For the Appellant :P.S. Raman, Senior Counsel, Gladys Daniel, Advocate.
For the Respondent:R. Abdul Mubeen, Advocate.

Headnote:
Trade marks Act, 1999 - Section 27(2), 29, 30, 134 and 135 – Civil Procedure Code,1950 - Order IV, Rule 1 - Indian Evidence Act - Infringement of Trademark - Suit for permanent injunction - Whether word ‘AACHI’ is a publici juris available in public domain and entitled to protection under Section 30 of Act, 1999 - Whether plaintiffs’ trademark “AACHI SUPER STORES” bearing No.1690157 under Class 42 is infringed by defendant by using name “SUDALI AACHI PROVISION” - Whether mark of defendant ‘SUDALI AACHI PROVISION’ on whole or part is identical or deceptively similar to registered trademark of plaintiff ‘AACHI SUPER STORES’ - Whether plaintiffs are entitled for relief of permanent injunction against defendant from using the mark “SUDALI AACHI PROVISION” and the website Sudaliaachi.com - Whether plaintiffs have suffered any monetary loss of goodwill on the defendant using the word ‘SUDALI AACHI PROVISION’ - Held, The expression “goods” and “description of goods” appearing in Section 12(1) of the Trade Marks Act indicate that registration may be made in respect of one or more goods or of all goods conforming a general description - registration of trademark can be used as shield by the plaintiffs to protect the mark from any identical or similar or deceptively similar imitations for the goods or service for which it has valid registration. It cannot to used as sword against anyone who use the word ‘Aachi’ per se or in combination for their goods or services without any dishonest or malafide intention. Hence, Issue No. (i) is answered accordingly - Parle Products (P) And Co. Mysore reported in - s Trading Sultan Tobacco reported in - Orchid Chemicals and Pharmaceuticals Wockhardt Ltd., reported in - reported in (2014) - plaintiffs claim that their use of the term Aachi for their products had gained distinct character, due to vast presence of its goods over world. - Court venture to trace etymology and character of tamil word to ascertain, whether word falls under category of ‘publici juris’ or gained a secondary meaning in favour of plaintiffs - Civil Suit is dismissed

JUDGMENT :

(Prayer: Civil Suit has been filed under Order IV, Rule 1 of the Original Side Rules and Order VII, Rule 1 of the C.P.C. Read with Section 27(2), 29, 134 and 135 of the Trade marks Act, 1999 praying to pass a judgment and decree:

(a) granting a permanent injunction, restraining the defendant by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising, offering for sale and running the website using same or similar or identical Trade Mark SUDALI AACHI PROVISION/sudaliaachi.com or any other similar Trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other Trademark which is in any way visually or phonetically similar to the 1st plaintiff’s trademark AACHI/AACHI SUPER STORE and use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trademark which is in any way visually, or phonetically similar to the plaintiffs’ registered trademark No.1690157 in Class 42 or in any manner infringe the 1st plaintiff’s registered trademark.

(b) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising, offering for sale and running the website using same or similar or identical Trade Mark SUDALI AACHI PROVISION/sudaliaachi.com or any other similar Trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the plaintiffs’ trademark AACHI/AACHI SUPER STORE or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trademark which is in any way visually, or phonetically similar to the plaintiffs’ Trademark AACHI/AACHI SUPER STORE or in any manner pass off the plaintiffs’ goods.

(c) directing the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name Sudali Aachi Provision or other visually or phonetically similar trade mark used in the pouches and packets.

(d) directing the defendant to render an account of profits made by them by the use of the impugned trademark Sudali Aachi Provision and decree the suit for the profits found to have been made by the defendant, after the defendant has rendered accounts;

(e) directing the defendant to pay to the plaintiffs the costs of the suit.)

(The case has been heard through Video Conferencing)

1. The suit for permanent injunction restraining the defendant, men, and agents from using the same or similar or identical trade mark “Sudali Aachi Provision/sudaliaachi.com” or any other trademark, which is similar in any way visually or phonetically similar to the 1st plaintiff’s trademark “AACHI/AACHI SUPER STORE” and for other consequential incidental reliefs.

The case of the plaintiffs as stated in the plaint runs as below:-

2. The plaintiffs are the leading manufacturers and marketers of spices in India. Presently, they are dealing in over 400 different products with the trademark ‘AACHI’. The said trademark ‘AACHI’ was first conceived and adopted by the 1st plaintiff and was trading through his proprietary concern, Abhishek Enterprises from the year 1995. The trade mark ‘AACHI’ was first applied for and registered in the name of the first plaintiff in the year 1999. Since then 202 applications have been filed for the trademark ‘AACHI’ in respect of various goods and services that have been manufactured, marketed and catered by the ‘AACHI’ group of companies. At present, there are 128 Indian registrations of the trademark ‘AACHI’ in various word, label and stylized marks.

3. The first plaintiff in the year 2002 entered into a partnership with Mrs.Rani Panidan and set up a partnership firm un

Click Here to Read the rest of this document

2021 Supreme(Mad) 1398

Cases Referred (12)