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2020 Supreme(Mad) 2322
IN THE HIGH COURT OF MADRAS
Dr. G. Jayachandran, J.
Hatsun Agro Product Ltd. - Appellants
Vs.
Kamadenu Dairy Farms - Respondent
C.S. No. 517 of 2019
Decided On : 19-02-2020
For the Appellant : Aashish Jain Cunia for Surana & surana
The use of a phonetically similar name to a registered trademark can constitute infringement and passing off, especially when it deceives consumers about the origin of the products.
Headnote:
Trademark Infringement - AROKYA - The court found the defendant guilty of trademark infringement and passing off by using the phonetically similar name 'AROGIYAM MILK' for their products, which was deemed to be deceptively similar to the plaintiff's registered trademark 'AROKYA'. The court granted injunction, directed surrender of infringing products, and ordered rendition of accounts of profits.
Fact of the Case:
The plaintiff alleged that the defendant infringed their registered trademark 'AROKYA' by marketing their product as 'AROGIYAM MILK'. The defendant failed to file a written statement and was set ex-parte. Evidence on the plaintiff's side proved substantial presence in the market and the defendant's use of a phonetically similar name.
Finding of the Court:
The court found the defendant guilty of infringement and passing off, and passed a decree for injunction, surrender of infringing products, and rendition of accounts of profits.
Issues: Trademark infringement, passing off, failure to file written statement, evidence of substantial market presence.
Ratio Decidendi: The defendant's use of a phonetically similar name to the plaintiff's registered trademark constituted infringement and passing off, as evidenced by the seized products and the plaintiff's substantial market presence.
Final Decision: The suit was allowed with costs, and the court granted injunction, directed surrender of infringing products, and ordered rendition of accounts of profits.
JUDGMENT :
Dr. G. Jayachandran, J.
1. The suit is filed under the Trademarks Act alleging that the plaintiff's registered trademark "AROKYA" is infringed by the defendant who is marketing its product under the name "AROGIYAM MILK".
2. According to the plaintiff, they adopted the unique trademark for their milk and milk products. Under the registered trademark "AROKYA", they manufacture Dairy products like ice creams, dairy whitener, skimmed milk powder, AGMARK Certified Ghee, Cooking Butter, Milk, varieties of curd, paneer and butter milk. They are in the trade since 1970, enjoying good reputation and patronage in the trade and general public. While so, their popular brand "AROKYA" has been imitated and infringed by the defendant for passing off the products as that of the plaintiff. Hence sought for the following relief:-
(a) For permanent Injunction restraining the defendant by itself, its agents, servants, distributors or any one claiming through it from using in any manner whatsoever upon and in relation to their business the "AROKYA" trademark by exposing for sale or using them or copying/reproducing or causing reproduction of the same in any packaging or literature or any colourable imitation or substantial reproduction thereof in any manner whatsoever so as to infringing or causing infringement of the plaintiff's trademark as described in the Schedule to the Plaint.
(b) For permanent Injunction restraining the defendant by itself, its agents, servants, distributors or any one claiming through it from using in any manner whatsoever upon and in relation to their business the "AROKYA" trademarks, artwork, colour schemes and trade dress and/or deceptive variations thereof so as to passing off or enable others to indulge in the act of passing off its goods or business as that of the Plaintiff's or in some way convey a connection with the Plaintiff as described in the Schedule to the Plaint.
(c) Directing the Defendant to surrender to the Plaintiff the entire products with the offending labels, stocks with offending labels together with the blocks and dies, name boards, sign boards etc. for destruction.
(d) Directing the Defendant to render true and faithful accounts of the profits earned by them through the sale of the offending milk products bearing the offending trademark label and directing payment of such profits to the Plaintiff.
(e) Directing the Defendant to pay to the Plaintiff the cost of the suit.
3. The defendant, who has entered appearance, has not filed the written statement within the time prescribed, hence set ex-parte. Pending suit, this Court, at the instance of the plaintiff, has appointed an Advocate Commissioner to visit the defendant's premises. The Advocate Commissioner on 30.11.2019 had inspected the defendant premises and has submitted his report indicating that the defendants are producing milk products under the name of "AROGIYAM MILK".
4. The defendant failed to file the written statement. So was set ex-parte. The evidence on plaintiff side was recorded by the Additional Master. B. Muthunathan, Legal Officer attached to the plaintiff's company has filed proof affidavit and marked 58 Exhibits.
5. Perusal of the plaint and the deposition along with the exhibits indicates that the plaintiff's company involved in manufacturing dairy products under the various brands such as 'ARUN', 'HATSUN', 'AROKYA', DAIRY INGREDIENTS', 'SANTOSA', 'HATSUN DAIRY', 'OYALO' etc. The manufacturing units of the plaintiff has obtained ISO certificates, which are marked as Ex. P-2 to Ex. P-4. The plaintiff has substantially presence in the market and to prove it the statement of annual turn-over and the promotional expenses reflected in Ex. P-12 to Ex. P-18 are marked. Ex. P-24 to Ex. P-55 are the copies of the trademark registration obtained by the plaintiff for the various products, which proves that the name "AROKYA" has been used by the plaintiff as the trademark for their products including milk.
6. The defendant milk product in
