The essential feature in a Trade Mark has to be determined based on the evidence and usage of the Trade. The Court also emphasized that the registration of a Trade Mark shall confer upon the proprietor the exclusive right to the use of the Trade Mark taken as a whole, and not in parts.

JUDGMENT :

(Sunder Mohan, J.)

(Prayer : Original Side Appeal filed under Section 13(1) of Commercial Court Act, to set aside the Judgement and decree passed by this Court in C.S.No.164 of 2017 dated 26.04.2021, allow the O.S.A.)

Challenging the Judgement and decree dated 26.04.2021 made in C.S.No.164 of 2017, the appellant has preferred the above Original Side Appeal.

2. The case of the Appellant/Plaintiff's in the suit was that they were a registered partnership firm and had registered themselves with various Statutory Authorities for the purpose of their business. They were also registered under the Tamil Nadu Food Safety and Drugs Administration. In order to create the brand identity for quality products manufactured and sold by them, they conceived, adopted and used the Trade Mark ''GOLD WINNER'' since 1999 for dhall and Flour varieties. They had obtained registration for the mark ''GOLD WINNER'' (LABEL) under Class 30. They generated enormous amount of goodwill and reputation in the Trade circles and that their Trade Mark ''GOLD WINNER'' is well established and well known Trade Mark. Thus, according to the Appellant/Plaintiff, they acquired both Statutory and Common Law Right of the said Trade Mark. According to the Appellant/Plaintiff, the Respondent/Defendant was doing the business of selling Sunflower oil and Vanaspati under the Trade Mark ''GOLD WINNER'' registered under Class 29. The Respondent/Defendant was selling dhall varieties under Trade Mark ''SREE GOLD'' since 2005 registered under Class 30. During that time, the Respondent/Defendant filed a rectification petition before the Trade Mark Registery, challenging the registration of the Appellant/Plaintiff's Trade Mark ''GOLD WINNER''. However, for the reasons best known to them, the Respondent/Defendant had withdrawn the said rectification petition on 30.01.2013, at the final stage. Thereafter, in the year 2017, the Respondent/Defendant started manufacturing and selling dhall varieties in the name ''GOLD WINNER'' which was deceptively similar to the Appellant/Plaintiff's registered Trade Mark. The Respondent/Defendant were aware of the prior registration of Appellant/Plaintiff's Trade Mark for dhall varieties and the Act of introducing dhall varieties in the same name ''GOLD WINNER'' showed dishonest and malafide intention. In fact, the Respondent/Defendant were selling their dhall products in the name of registered Trade Mark ''SREE GOLD'' till 2017 and the sudden change was made fraudulently and dishonestly to cut into the Appellant/Plaintiff's business and piggy back on its reputation in the Trade circles. The appellant therefore, prayed for permanent injunction restraining the Respondent/Defendant from infringing the Trade Mark and passing off their goods bearing the impugned Trade Mark as that of the Appellant/Plaintiff's goods and for consequential reliefs.

3. The Respondent/Defendant filed a written statement stating inter alia that they were the largest Sunflower oil Manufacturers in India and their brand ''GOLD WINNER'' is ranked among the top 100 FMCG consumer brands in India and is No.1 in the Edible Oils Category in South India. They adopted and conceived the mark ''GOLD WINNER'' in January 1993 with distinctive character for oil and vanaspati. They were the proprietor of the invented Trade Mark for almost 25 years and were registered under Class 29 for ''GOLD WINNER'' and Class 30 for the mark ''GOLD WINNER SREE GOLD''. The Respondent/Defendant launched a range of dhall products in the year 2005 under the Trade Mark ''GOLD WINNER SREE GOLD''. The Respondent/Defendant is the absolute proprietor of the Trade Mark ''GOLD WINNER'' and various Trade Marks registration in Class 29 and Class 30. They had also secured international Trade Mark registration for its mark ''GOLD WINNER''. By virtue of their extensive use, statutory registration as well as publicity,