The court confirmed that mere similarity in trademarks does not constitute infringement; factors like market presence and distinct branding are critical.

JUDGMENT :

N. MALA, J.

1. The 1st defendant in the suit has filed the above appeal. The appeal is filed challenging the Judgment and Decree dated 19.08.2013 passed in O.S. No. 35 of 2010 on the file of the Principal District Court of Virudhunagar at Srivilliputhur.

2. The parties will be referred to as per their ranking in the suit.

3. The brief facts of the case leading to the above appeal are as follows:

The plaintiff is a registered partnership firm having its principal place of business at Sivakasi, Virudhunagar District, Tamil Nadu. The plaintiff is a manufacturer of fireworks, crackers, sparklers and other allied products in India since 1923. The products of the plaintiff are represented by a unique trademark COCK with a device of multi colour rooster inside the two circles in the background of yellow shade which was devised by the founders of the plaintiff’s firm in 1923 and registered in Class 13 of the Register of Trade marks on 17.08.1954 under Registration No. 165412. The Trade mark of the plaintiff was renewed from time to time. The plaintiff earned a reputation for itself among the users of the fire works. The plaintiff spent huge amount to popularise its COCK brand products across the country by incurring considerable expenditure for the same. The plaintiff had issued Trade mark Caution Notice in all leading newspapers on 09.03.2010 to protect its Trade mark COCK. According to the plaintiff, it registered its distinctive artistic work of the trade mark COCK under the Copyright Act also in Copyright Registration No. A-95119/2009 with its name “KALISWARI.”

4. It was the plaintiff’s further case that the defendants conspired together to spoil the name of the plaintiff’s fireworks products and in order to gain unlawfully indulged in manufacturing and marketing inferior quality fireworks under a deceptively similar ‘DUCK’ as shown in the “B” Schedule in the market areas of the plaintiff. The plaintiff stated that the first defendant had devised its trade mark with the pictogram of DUCK which is very similar to the pictogram of COCK of the plaintiff. The plaintiff stated that the first defendant purposely and maliciously in order to pass off its products as that of the plaintiff, devised the colour scheme, get up, artistic work, placement and layout of its DUCK as that of the plaintiff’s COCK trade mark. According to the plaintiff, phonetically also the word ‘DUCK’ is similar to the word ‘COCK’ and the two circles around the rooster and yellow colour background of the plaintiff’s pictogram were imitated by the 1st defendant to make its mark appear deceptively similar to that of the plaintiff. The plaintiff came to know about the use of trade mark ‘DUCK’ of the 1st defendant, which is deceptively similar to that of the plaintiff during Diwali i.e. in the month of October, 2009. The plaintiff orally advised the first defendant and though the 1st defendant agreed to desist from infringing and passing off the offending trade mark ‘DUCK’ nevertheless continued to market it’s products with the offending trade mark with the aid of the other defendants. The plaintiff issued a legal notice to the first defendant, but the first defendant failed to reply to the same or stop the usage of the offending trade mark. The plaintiff was therefore constrained to file the suit for infringement and passing off under the TRADE MARKS ACT and for infringement of Copy Right under the Copy Rights Act for the following reliefs:

(a) Permanent injunction restraining the Appellant from in any manner infringing its trademark COCK with the very same colour scheme and the appearance.

(b) Appellant Permanent from in injunction any manner restraining infringi