Back
IN THE HIGH COURT OF JUDICATURE AT MADRAS
N. ANAND VENKATESH, J.
WITCO (India) Pvt. Ltd., T.Nagar – Appellant
Versus
NITCO, Chennai & Others – Respondent
Civil Suit No.372 of 2009 (Comm. Suit)
Decided On : 22-12-2021
Civil Procedure Code, 1908 - Order VII Rule 1 - Trade Marks Act, 1999 - Sections 11(3)(a), 27(2), 28, 28(3), 29, 134, 134(1)(c) and 135 - Permanent injunction - Injunct Defendants from using mark “NITCO” with or without tagline or using similar sounding names or other marks deceptively similar to Plaintiffs’, including “SITCO” or any other variation which is visually, phonetically and structurally similar to Plaintiff's registered trademark - Plaintiff claims Defendants have adopted mark “NITCO” with a malafide intention of making illegal gains and commercially exploiting goodwill and reputation earned by Plaintiff over several decades - Defendants in written statement submitted there was no Mala-fide intention on part of Defendants in using the mark as there is no phonetic or visual similarity between the two marks - Whether registered trade and service mark of Plaintiff has been infringed by Defendants with identical design and appearance - Whether user of mark "NITCO" is having identical design and appearance and whether same is also deceptively similar to that of trade and service mark "WITCO" of Plaintiff - Whether Plaintiff is entitled to a permanent injunction as prayed for - Whether Plaintiff is entitled for a mandatory injunction as prayed for - Whether Defendants are liable to pay a sum of Rs.10 lakhs by way of damages, for acts of infringement and passing off, to Plaintiff - Whether Plaintiff is entitled to a preliminary decree as prayed for – Held, Defendants are practicing deceit and trying to sell goods/services on goodwill/reputation of Plaintiff and obtained an economic advantage/gain - Plaintiff has a better/superior right in common law and has made out a case for passing-off action - Closing down all their showrooms will not deprive Plaintiff from getting relief in present suit and that will also not be a ground to permit Defendants to continue to use mark “NITCO or SITCO” or any other mark which is structurally and phonetically similar to that of registered mark of Plaintiff - Court has absolutely no hesitation to hold that Plaintiff is entitled for relief of permanent injunction and mandatory injunction as sought for - Court has already found that Defendants were injuncted from using impugned mark “NITCO” from December onwards - Defendants have been using mark “SITCO” - Court is not inclined to grant payment of any damages by Defendants to Plaintiffs - Considering conduct of Defendants and culpability on their part, Court will sufficiently compensate Plaintiff by imposing an exemplary cost against Defendants - There is no requirement to award damages separately - There is also no requirement to direct for rendition of accounts by Defendants - Defendants to pay exemplary cost of a sum of Rs.5,00,000/- to plaintiff – Suit decreed.
JUDGMENT :
(Prayer: Civil Suit has been filed under Order VII Rule 1 of C.P.C. And Order IV Rule 1 of O.S.Rules r/w Sections 28, 29, 134 and 135 of the Trade Marks Act, 1999, praying to pass a judgment and decree.
(i) For a permanent injunction, restraining the Defendants, their partners, servants, agents, men, or anyone claiming through them from in any manner infringing the registered Trade/Service Mark fo the Plaintiff viz., WITCO in any form deceptively similar to the business name of the Plaintiff.
(ii) For a permanent injunction restaining the Defendants their partners, servants, agents, men or anyone claiming throug them from in marketing, distributing, offering, advertising or using the Mark 'Nitco' in any form or variation in English Language and or any other Vernacular language with or withou the tagline “The luggage Expert” or similar sounding names or any other mark deceptively similar to the Plaintiff's mark witco with identical colour scheme, get up and layout inthe course of their Trade/services and passing off goods or services or enabling tothers to pass off the goods or services as the goods of the Plaintiff or as services provided by the Plaintiff.
(iii) For a mandatory injunction directing the Defendants to deliver to the Plaintiff all the business materials, goods, invoices, bills, receipts, books of accounts, cartons, advertisement materials, hoardings, letter- heads, visiting cards, office stationery and all or any other materials containing/bearing the Mark 'Nitco' with or without the logo “The Luggage Expert” or any other deceptively similar mark or labels for destruction.
(iv)directing the defendants to pay to the Plaintiff a sum of Rs.10,00,000/- by way of damages for the acts of infringement and passing off.
(v) For apreliminary decree directng the Defendants to render and account for profit made by them by the use of the mark 'Nitco' with or without the logo/tagline “the luggage expert” as and from 28.02.2009 and for a final decree in favour of the Plaintiff for the amount of profits found to have been made by the Defendants after rendering accounts, and
(vi) Directing the Defendant to pay to the Plaintiffs' the costs to the suit.)
1. The instant suit has been filed seeking for a permanent injunction, restraining the Defendants, their partners, servants, agents, men or anyone claiming through them from in any manner infringing or passing off of the Plaintiff’s registered trademark “WITCO” and injunct the Defendants from using the mark “NITCO” with or without the tagline or using similar sounding names or other marks deceptively similar to the Plaintiffs’, including “SITCO” or any other variation thereof which is visually, phonetically and structurally similar to the Plaintiff's registered trademark. The Plaintiff has also sought for a direction to the Defendants to deliver to the Plaintiff all the business materials, goods, invoices, etc., containing the infringing mark and has further prayed for a direction to the Defendants for rendition of accounts.
CASE OF THE PLAINTIFF:
2. The case of the Plaintiff pertains to infringement and passing off of the registered trademark “WITCO”. The trademark “WITCO” was registered by the Plaintiff under Class 16 and 42 in Registration No.692172 on 12-11-2003. The Plaintiff states that their “WITCO' was started by late M.P.C.Mohammed, father of the directors of the Plaintiff Company in the year 1951. Further, in the 1970’s “WITCO” gradually transformed from the wholesale business into retail business. The Plaintiff further states that their Firm “WITCO” was duly incorporated as a Private Limited Company under the Companies Act, 1956 in the name and style of ‘WITCO INDIA PVT LIMITED’’ in 1988. The Plaintiff states that their original “WITCO” logo was redesigned in 2005 after spending considerable time and research and that the present logo type was designed to give a young, casual, friendly and fresh look. The further claim of the Plaintiff is that their “WITCO” logo which
SupremeToday
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
