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2024 Supreme(Online)(MAD) 4922
IN THE HIGH COURT OF JUDICATURE AT MADRAS Reserved on : 04.01.2024 Pronounced on : 12.01.2024 CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE C.S.(Comm. Div.)No.270 of 2019 Hindustan Colas Private Limited, HINCOL House, B-601, 6th Floor, Marathon Futurex, N M Joshi Marg, Lower Parel, Mumbai - 400 013.
Rep. by its Chief Operating Officer, Mr.Raju N Nair ... Plaintiff Vs.
Muthoos Enterprises, 237/2, Rohini Flats, 7th Avenue, Annanagar, Chennai - 600 101. ... Defendant Prayer: Plaint filed under Order IV Rule 1 of the Original Side Rules and Order VII Rule 1 of the C.P.C. read with Sections 27, 134 and 135 of the Trademarks Act, 1999, Sections 51, 54, 55 and 62 of the Copyright Act, 1957 and Proviso 1 to Section 7 of the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015:
a) a permanent injunction restraining the defendant, themselves, their partners, successors-in-business, servants, agents, distributors, dealers, stockists, wholesalers, retailers, shop keepers, representatives, assigns and all other persons claiming through them from manufacturing, selling and distributing, advertising bitumen emulsion using the MUTHOOS label which is almost identical/deceptively similar to the plaintiff's HINCOL label amounting to infringement of the plaintiff's copyright in the HINCOL label, in any manner whatsoever;
b) a permanent injunction restraining the defendants by themselves, their directors, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing selling, offering for sale, advertising or in any other manner dealing in bitumen emulsion or any other product bearing the deceptively similar mark/label MUTHOOS which is confusingly similar to plaintiffs mark/label HINCOL, or by using any other similar label, get -up, or packaging, which in any manner whatsoever would be considered to be similar to the plaintiff's label, get up or packaging;
c) the defendant be ordered to pay to the plaintiff a sum of Rs.10,00,000/- as damages for committing acts of infringement of copyright and passing off;
d) the defendant be ordered to surrender to the plaintiff for destruction all goods advertisement materials, packing materials, cartons, wrappers, labels in respect of bitumen emulsion and other allied / cognate goods containing the offending MUTHOOS mark/label or any other mark/label similar to plaintiff's trademark/label HINCOL;
e) a preliminary decree he passed in favour of the plaintiff directing the defendant to render true and faithful account of profits earned by them by use of offending MUTHOOS label/trademark for bitumen emulsion or other allied and cognate goods and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts;
f) for entire costs of the suit.
For Plaintiff : Mr.Arun C.Mohan For defendant : Mr.P.Sanjai Gandhi
JUDGMENT
The suit has been filed for infringement of copyright and for passing off and for the consequential relief of damages.
2. According to the plaintiff, they have adopted the mark of "Hincol" along with its distinct logo / label as early as in the year 1996 for the purpose of its flagship product, "bitumen emulsion". The packaging of the plaintiff's barrels that contain the plaintiff's bitumen emulsion are black in colour with the "Hincol" logo emblazoned in the centre along with a diamond shape in yellow surrounding the "Hincol" logo. According to the plaintiff, their colour scheme of black and yellow on a barrel is identified with that of the plaintiff's for the last 27 years.
3. According to the plaintiff, the defendant adopted the mark "Muthoos" for packaging of a similar product i.e., "bitumen emulsion". However, according to the plaintiff, the defendant has copied the colour scheme of black and yellow, get up containing the yellow in diamond shape and layout thereof bearing an overall similarity to the plaintiff's label. Under those circumstances, this suit has been filed for infringement of copyright and passing off and for the consequential relief of damages.
4. However, according to the defendant, they have established their business in the year 2009 and obtained trademark registration for their logo "Muthoos Enterprises". According to them, the plaintiff never challenged the defendant's trademark registration for their logo "Muthoos Enterprises", by filing an appropriate application under the Trademarks Act, seeking for rectification of the defendant's trademark registration for their logo "Muthoos Enterprises". According to the defendant, having not sought for rectification of the registration of the defendant's logo "Muthoos Enterprises" as per the provisions of the Trademarks Act, the present suit is not maintainable. The defendant would also contend in their written statement that the suit is barred by limitation under Order VII Rule 1 of C.P.C. read with Sections 27, 134 and 135 of the Trademarks Act, 1999.
5. According to the defendant, the attempt made by the plaintiff that they noticed the defendant's usage of the logo "Muthoos Enterprises" and the trade dress, only in the year 2019, is a false statement and has been made only for the purpose of saving limitation for filing the present suit.
6. The defendant categorically states that their logo/ label is not deceptively similar to that of the plaintiff's logo / label and will not cause any confusion in the minds of the general public and will never give them an impression that the product viz., "bitumen emulsion", purchased from the defendant under its trade name "Muthoos Enterprises" is that of the plaintiff.
7. According to the defendant, the plaintiff's logo with a tag line "we open the way" differentiates from the defendant's logo which does not contain any tag line.
8. Based on the pleadings of the plaintiff and the defendant, the following issues were framed by this Court:
a) Whether the defendant is infringing the plaintiff's copyright in the "Hincol" label by using an identical or deceptively similar label or packaging in their "Muthoos" label?;
b) Whether the defendant's adoptation of an identical trade dress as that of the plaintiff's distinct label or packaging amounts to passing off?
9. Before the learned Additional Master - IV, the plaintiff's witness, Mr.Subin Punnoose, who is the Regional Business Head- South of the plaintiff, was examined as a witness (PW1). The proof affidavit of Mr.Subin Punnoose (PW1) was also filed before the learned Additional Master - IV. In his proof affidavit, PW1 has reiterated the contents of the plaint. Through, PW1, the following documents were marked as exhibits on the side of the plaintiff:
| Exhibit No. | Nature of Documents | Date |
| P1 | Notarized copy of power of attorney | 10.04.2017 |
| P2 | Certified copy of registration of trademark registered under No.944421 in class 19 | 02.08.2000 |
| P3 | Certified copy o | |
