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2007 Supreme(Mad) 4341
IN THE HIGH COURT OF MADRAS
P.K. MISRA, K.K. SASIDHARAN, JJ.
Amaravathi Enterprises - Appellant
Vs.
Karaikudi Chettinadu - Respondent
O.S.A. Nos. 325 and 326 of 2007 and M.P. Nos. 1 and 1 of 2007
Decided On : 20-12-2007
Advocate Appeared:
For the Appellant : A.A. Mohan, Adv.
For the Respondent: R. Murari, Adv.
The main legal point established in the judgment is the significance of prior usage and registration as prima facie evidence in trademark infringement cases, and the importance of proving continuous usage to support a claim of prior usage.
Headnote:
TRADEMARK - Infringement - Trade Marks Act, 1999 - Section 28, 34 - The court discussed the principles of prima facie case, balance of convenience, and irreparable injury in granting injunction. The appellant's prior usage and registration of the trade mark were considered as prima facie evidence. The court found that the respondent failed to prove continuous usage and dismissed the respondent's claim of prior usage. The court held that the appellant had a prima facie case and granted the interlocutory injunction.
Fact of the Case:
The appellant filed a suit against the respondent for infringement of the appellant's registered trade mark 'KAARAIKUDI CHETTINAD RESTAURANT' and sought a permanent injunction and damages. The respondent opposed the claim, asserting prior usage of the trade mark 'KARAIKUDI CHETTINADU RESTAURANT'. The trial court rejected the appellant's plea for interlocutory injunction, leading to the appeal.
Finding of the Court:
The court found that the appellant had a prima facie case and granted the interlocutory injunction. It dismissed the respondent's claim of prior usage due to the failure to prove continuous usage. The court emphasized the importance of prior usage and registration as prima facie evidence in trademark infringement cases.
Issues: The main issue was the infringement of the appellant's registered trade mark by the respondent and the claim of prior usage by the respondent.
Ratio Decidendi: The court's decision was based on the principles of prima facie case, balance of convenience, and irreparable injury in granting injunction. The appellant's prior usage and registration of the trade mark were considered as prima facie evidence, and the respondent's failure to prove continuous usage led to the dismissal of their claim of prior usage.
Final Decision: The court granted the interlocutory injunction in favor of the appellant, setting aside the trial court's order and allowing the appellant's applications for injunction. The respondent was granted three months to remove the trade name 'KARAIKUDI CHETTINADU RESTAURANT' and comply with the injunction.
JUDGMENT :
K.K. SASIDHARAN, J.
1. The unsuccessful petitioner in O.A.Nos. 775 and 776 of 2007 in C.S. No. 559 of 2007 is the appellant in these appeals.
2. The appellant herein as plaintiff filed C.S. No. 559 of 2007 against the respondent herein for a judgment and decree of permanent injunction restraining the respondent herein from in any manner using or otherwise dealing with the trade mark "KARAIKUDI CHETTINADU RESTAURANT" amounting to infringement of the appellant's registered trade mark "KAARAIKUDI CHETTINAD RESTAURANT" under No. 615430 in class 29? "KARAIKUDI" under Nos. 615442 in class 32, No. 61551 in class 31 and "KAARAIKUDI CHETTINAD RESTAURANT "under No. 1268034 in class 42 or in any other manner whatsoever and also for a decree of permanent injunction to restrain the respondent from advertising or otherwise dealing with the trade mark/trade name "KARAIKUDI CHETTINADU RESTAURANT" and thereby passing off their products, services and business of the appellant or in any other manner whatsoever and for payment of a sum of Rs. 10,05,000/- as damages for continuing infringement of trademarks and passing off its products as and for the appellant's product and services and to order the respondent to surrender to the appellant for destruction, name boards, invoices/bills, prints, dies, blocks, moulds and plates, screen prints, packing and advertising material and other material in the respondent's possession, which bears the trade mark/trade name "KARAIKUDI CHETTINADU RESTAURANT" and for a preliminary decree directing the respondent to render accounts of profits made by use of identical trade mark/trade name "KARAIKUDI CHETTINADU RESTAURANT".
3. The appellant also filed two interlocutory applications in O.A.Nos. 775 and 776 of 2007 along with the suit for an interim injunction restraining the respondent from in any manner using the trade mark "KARAIKUDI CHETTINADU RESTAURANT" amounting to infringement of the appellant's registered trade marks "KAARAIKUDI CHETTINAD RESTAURANT" under No. 615430 in class 29; "KARAIKUDI" under Nos. 615442 in class 32, 61551 in class 31 and "KAARAIKUDI CHETTINAD RESTAURANT" under No. 1268034 in class 42 or in any other manner whatsoever pending disposal of the suit (O.A. No. 775 of 2007) and for an injunction restraining the respondent from advertising or otherwise dealing with the trade mark "KARAIKUDI CHETTINADU RESTAURANT" and thereby passing off their products, services and business as and for the products, services and business of the appellant. (O.A. No. 776 of 2007).
4. According to the appellant they are in the hospitality industry and running Hotels and other catering industries being part of famous SAVERA group and they are conducting restaurants under various trade names like Amaravathi, Malgudi, The Dhaba, Palki, Kabul and Duchess in addition to "Karaikudi". The appellant also obtained trade mark in various classes for their business and as per registration No. 615430 dated 4.1.1994 they obtained registration under class 29 for Meat, fish, preserved dried and cooked fruits and vegetables, jellies, jams etc. and as per registration No. 615442 dated 4.1.1994 they obtained registration in class 32 for fruit juices and other non-alcoholic drinks and as per registration No. 61551 the appellant was granted registration in class 31 for Agricultural, horticultural and forestry products including fresh fruits and finally as per registration No. 1268034 dated 19.2.2004 they were granted trademark "KAARAIKUDI CHETTINAD RESTAURANT" under class 42 providing for food and drinks, hotel, boarding, canteen, snacks, bar, restaurants etc.
5. It is the case of the appellant that their restaurants are family landmarks in the city of Chennai and has immense reputation and goodwill in its exclusive areas. Their restaurant "KARAIKUDI" is very popular and well-known for Chettinad food and its patrons includes several popular personalities from all walks of life. The appellant has got restaurants with the trade mar
