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2007 Supreme(Mad) 4343
IN THE HIGH COURT OF MADRAS
M. JEYAPAUL, J.
S. Sudhakar and Shri Lakshmi Agro Foods Pvt. Ltd. - Appellant
Versus
S.S.P. Durairaj (Firm) and Mr. Durairaj - Respondent
O.A. No's. 145, 146 and 147 of 2007 in C.S. No. 60 of 2007, A. No's. 1960 and 1961 of 2007 in O.A. No. 145 of 2007, A.Nos.1962 and 1963 of 2007 in O.A. No. 146 of 2007 and A. No's. 1964 and 1965 of 2007 in O.A. No. 147 of 2007
Decided On : 03-04-2007
For the Appellant : Sathish Parasaran, T.V. Ramanujam, for P.C.N. Raghupathy.
For the Respondent: T.V. Ramanujam, for P.C.N. Raghupathy and Sathish Parasaran.
The court emphasized the importance of comparing the essential features of trade marks and assessing the likelihood of deception or confusion to determine infringement and passing off.
Headnote:
Infringement - Trade Mark - 595393B - The court vacated the ad interim injunction in favor of the respondents for the use of the trade mark and copy rights and doing the act of passing off in the consumer retail packages. However, the interim injunction in favor of the applicants was made absolute in respect of the use of the trade mark and copy rights and doing the act of passing off by the respondents in the bulk gunny bags of 50 kgs, 100 kgs, etc.
Fact of the Case:
The applicants, traders of food and allied products, sought injunction against the respondents for using a trade mark and device/logo/artistic work similar to theirs, alleging infringement and passing off.
Finding of the Court:
The court found that the respondents' use of the trade mark in the consumer packages was dissimilar to the registered trade mark of the applicants, but the use in the bulk gunny bags was deceptively similar, leading to confusion. The court vacated the ad interim injunction in favor of the respondents for the use of the trade mark in the consumer retail packages and made the interim injunction in favor of the applicants absolute for the use of the trade mark in the bulk gunny bags.
Issues: Prima facie infringement of the applicants' registered trade mark and copy right and tort of passing off goods.
Ratio Decidendi: The court considered the essential features of the trade marks, the likelihood of deception or confusion, and the comparison of the marks to determine infringement and passing off.
Final Decision: The ad interim injunction in favor of the respondents for the use of the trade mark and copy rights in the consumer retail packages was vacated, while the interim injunction in favor of the applicants for the use of the trade mark in the bulk gunny bags was made absolute.
ORDER :
M. Jeyapaul, J.
Seeking interim injunction restraining the respondents and their agents fusing the copy right, using the trade mark and doing the act of passing off, the aforesaid O.A. Nos. 145, 146 and 147 of 2007 have been respectively filed. This Court was pleased to grant ad-interim injunction in absentia of the respondents in respect of the aforesaid reliefs. The respondents have filed Application Nos. 1960, 1962 and 1964 of 2007 seeking to vacate the aforesaid ex-parte order of ad-interim injunction in favour of the applicants. A.Nos.1961, 1963 and 1965 of 2007 have been filed seeking to suspend the ex-parte order of interim injunction granted in favour of the applicants.
2. For the sake of brevity and also to avoid confusion in referring to the respective parties, the plaintiffs are referred as applicants and the defendants are referred as respondents.
3. The sum and substance of the case of the applicants is as follows:
The first applicant is the Managing Director of the second applicant Company and the Joint Proprietor of the trade mark 'UDHAIYAM". The applicants are the traders of all types of food and allied products such as Dhall, Atta, Rava, Maida, Salt. Rice, Spices, Fried gram, Appalam, Idly batter etc. The applicant's goods are sold under the trade mark "UDHAIYAM". The trade mark was originally commenced by the first applicant's ancestors during the year 1940. It has been registered under No. 595393B dated 24.3.1993. The trade mark of the applicant consists of the name 'UDHAIYAM' along with the mark/device/logo/artistic work of sun rays. They enjoy a market share of 90% in respect of its Dhall alone in Tamilnadu. They have established an extremely efficient supply chain, logistic and wide spread distribution network. The trade mark 'UDHAIYAM' together with the device/logo/artistic work of sun rays was honestly conceived employed and exploited by the applicant since 1940. They have invested heavily in bringing about a singular association between the said trade mark together with the device and the applicants in the minds of the large body of consuming and trading public. They have spent substantial amounts towards advertisement of their trade mark 'UDHAIYAM' along with the predominant device/logo/artistic work. The statement of turnover generated by the applicants would show that the second applicant alone has generated sales turn over of approximately Rs. 178.50 Crores for the period 1994 to 2005 under the trade mark 'UDAIYAM' and has spent a sum of approximately Rs. 92.3 lakhs for the period 1994 to 2005 towards the advertisement of the said trade mark. The trade mark of the applicants has become well known mark and commands Immense reputation in India. The respondents have recently started manufacturing and selling verieties of Dhall in both bulk packaging of 50 kgs, 100 kgs etc. and retail packing of 1 kg, 2 kgs, 5 kgs predominantly employing the device/logo/artistic work which is identical /deceptively simitar to the distinct device/logo/artistic work of the applicants. The unwary customers are deceived by seeing the device/logo/artistic work of the applicants. Using the identical device/logo/artistic work of the applicants over the packages of the respondents clearly amounts to an act of infringement as well as a tort of passing off. The applicants reputation and sales will be adversely affected by the reason of the respondents act of infringement and hence, the reliefs are sought for as above.
4. In the common counter affidavit, the respondents would submit that they are carrying on business in manufacturing and marketing Dhall products at Royapuram in Chennai right from the year 1959 under the name and style of 'S.S.P. Duralraj(Firm)'. In the year 1998, they adopted the label mark 'ARVEE' with the device of rising sun for their Dhall products. The letters "AR" are taken from the son of the second respondent and the letters "VEE" are taken from the name of the brother of the second respondent's son nam
