Allowed

M/S. Sri Lakshminarayana Rice Mill v. M/S. Chandrika Industries

Karnataka HC12 Mar 2024RFA/1241/2009

Case brief

AI extract

What is this about?

Suit for permanent injunction over rice brand marks "MOTHER INDIA" versus "MOTHER LAND". First appeal reversed the trial court's dismissal, holding no acquiescence and that the marks were deceptively similar when compared as a whole. Suit decreed; injunction and surrender of offending materials granted.

What did the court decide?

Judgment and decree set aside in part; suit decreed: defendants restrained from infringing/passing off plaintiff's mark and copyright; unused offending labels and materials to be surrendered for destr

M/S. Sri Lakshminarayana Rice Mill Vs M/S. Chandrika… — Intellectual Property | Karnataka HC (2024)

¶1

1 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶2

IN THE HIGH COURT OF KARNATAKA AT BENGALURU DATED THIS THE 12^TH DAY OF MARCH, 2024

¶3

BEFORE

¶4

THE HON'BLE MR JUSTICE ANANT RAMANATH HEGDE

¶5

REGULAR FIRST APPEAL NO. 1241 OF 2009 (IPR)

¶6

BETWEEN:

¶7

M/S. SRI LAKSHMINARAYANA RICE MILL RAICHUR - 584102, KARNATAKA HAVING ITS BRANCH OFFICE AT S.NO.31/1, 43/3,NH-4, TUMKUR ROAD, VISHVESHWARAPURA VILLAGE TALUK NELAMANGALA - 562123, REPRESENTED BY ITS PARTNER MR. M K GOPALAKRISHNA.

¶8

…APPELLANT

¶9

(BY MS MEDINI RAO, ADVOCATE FOR SMT ANNU BHARADWAJ, ADVOCATE) AND:

¶10

Digitally signed by BELUR RANGADHAMA NANDINI Location: HIGH COURT OF KARNATAKA

¶11

M/S CHANDRIKA INDUSTRIES, GADWAL ROAD, RAICHUR - 584102, KARNATAKA, REPRESENTED BY ITS PROPRIETOR.

¶12

…RESPONDENT

¶13

(BY SRI NAVEED AHMED, ADVOCATE)

¶14

THIS RFA IS FILED UNDER SECTION 96 OF CPC, AGAINST THE JUDGMENT AND DECREE DATED 07.08.2009 PASSED IN O.S.NO.15474/2006 ON THE FILE OF XVII ADDITIONAL CITY CIVIL JUDGE, BANGALORE (CCH NO.10) DISMISSING THE SUIT FOR PERMANENT INJUNCTION.

¶15

THIS APPEAL COMING ON FOR DICTATING JUDGMENT THIS DAY THE COURT DELIVERED THE FOLLOWING:

¶16

2 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶17

JUDGMENT

¶18

This appeal is arising from the judgment and decree passed in OS No.15474/2006 on the file of XVIII Additional City Civil Judge, Bengaluru. The suit is one for injunction. The plaintiff has sought permanent injunction to restrain the defendant and any one claiming under the defendant from interfering the plaintiff's well established trade mark "MOTHER INDIA" by using the offending trade mark "MOTHER LAND" or any other trade marks which are deceptively similar to the plaintiff's trade mark "MOTHER INDIA".

¶19

Relief is also sought to restrain the defendant or any one person claiming through defendant from passing off the plaintiff's well-established trade mark "MOTHER INDIA" by using the trade mark "MOTHER LAND" or any other trade mark which are deceptively similar to the plaintiff's trade mark.

¶20

The plaintiff also prayed for Mandatory injunction to surrender to the plaintiff the unused offending trade mark labels, gunny bags, advertisement materials, bill books, hoardings, brochures, visiting cards and etc containing the trade mark "MOTHER LAND" for destruction.

¶21

¶22

NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶23

A direction is also sought against the defendant to render the true and faithful accounts of the profits earned by the defendant by using the offending trade mark "MOTHER LAND".

¶24

The facts pleaded in the plaint can be summarised

¶25

as under:

¶26

5.1 The plaintiff is a partnership firm by name M/s Sri.Lakshminarayan Rice Mills, Raichur carrying on the business in marketing superfine rice under the brand name "MOTHER INDIA". The trade mark is duly registered in registration No.632033B. The artistic work, design in respect of the trade mark "MOTHER INDIA" is also registered under the provisions of The Copyright Act, 1957 under registration No.A-57142/1999, vide the order of certification dated 14.12.1999.

¶27

5.2 The trade mark/copy right of the trade mark "MOTHER INDIA" registered in the name of the plaintiff has become a distinctive trade mark and the plaintiff has earned good reputation, good will

¶28

¶29

NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶30

around the said trade mark. The plaintiff has been using trade mark since 1993.

¶31

5.3 The defendant started using the trade mark by name "MOTHER LAND" which is phonetically and visually similar to the trade mark of the plaintiff with an intention to confuse and to gain undue advantage from the brand name created in favour of the plaintiff's trade mark.

¶32

5.4 The defendant despite being aware that the plaintiff is the registered owner of the trade mark and copy right holder of the mark "MOTHER INDIA", is selling the rice under the trade mark "MOTHER LAND" by imitating the artistic work, design and get- up of the plaintiff's registered trade mark and copy right which is deceptively similar to the trade mark of the plaintiff "MOTHER INDIA".

¶33

5.5 On 10.11.2005, the plaintiff had issued notice to the defendant asking the defendant not to use the trade mark of the plaintiff. The said notice was answered

¶34

5 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶35

by the defendant through a lawyer vide notice dated 23.11.2005. Hence, the suit is filed.

¶36

The defendant has appeared and filed a written statement and contested the suit. The defendant has taken a defence that;

¶37

6.1. The defendant has not violated any rights of the trade mark or the copyright registered in favour of the plaintiff.

¶38

6.2. Though the word "MOTHER LAND" and "MOTHER INDIA" are phonetically similar, however, the words registered in the name of the plaintiff are not innovative and the plaintiff cannot claim exclusive right over the same and the defendant cannot be restrained from using the said trade mark namely "MOTHER LAND".

¶39

6.3. Many persons are using the trade mark "MOTHER INDIA" claimed by the plaintiff which is very much similar to the trade mark claimed by the plaintiff and no action is initiated against them.

¶40

6 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶41

6.4. The words over which the plaintiff claims Trade mark are descriptive.

¶42

The Trial Court has framed issues. Parties have led evidence. The plaintiff has led evidence of one of the partners. The defendant propriety concern is examined through DW1, the proprietor.

¶43

Trial Court dismissed the suit after holding that the plaintiff has registration in favour of the trade mark and copy right over the words "MOTHER INDIA"". The Trial Court held that the plaintiff is not entitled to relief of injunction on the premise that there is delay in instituting the suit and the plaintiff has acquiesced the act of the defendant in using trade mark "MOTHER LAND" and that the plaintiff has no exclusive right conferred on the trade mark "MOTHER INDIA", the map and also the logo. The Trial Court has concluded that the plaintiff is unable to establish the alleged loss on account of the use of the trade mark used by the defendant.

¶44

Learned counsel Medhini Rao appearing for the plaintiff/appellant would urge before this Court that the evidence given by DW-1 in his cross-examination that the

¶45

7 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶46

plaintiff has been using the trade mark since 1999 has been wrongly construed to say that the plaintiff has admitted that the defendant is using said trade mark since 1999. It is urged that the dismissal of the suit on the ground that the plaintiff has acquiesced the act of the defendant is erroneous. The suit is filed when the plaintiff came to know the use of the trade mark "MOTHER LAND" by the defendant which was deceptively similar to the trade mark registered in the name of the plaintiff. Once the registration of the trade mark is established and use of the trade mark which is phonetically and visually similar, the Trial Court could not have dismissed the suit on the premise that there is acquiescence on the part of the plaintiff in allowing the defendant to use the trade mark "MOTHER LAND".

¶47

Learned counsel for the plaintiff/appellant would also contend that the trade mark should be considered as a whole not as a part. Merely because, other persons are allowed to use the expression "MOTHER LAND" and the map in terms of the rider imposed in the registration certificate, does not mean that any person can use the same collectively. If so done, it is nothing but violation of the trade mark registered in favour of the plaintiff/appellant.

¶48

8 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶49

It is the further contention that the use of the offending trade mark by the defendant i.e., the trade mark "MOTHER LAND" is nothing but use of the essential features of the trade mark registered in favour of the plaintiff. It is also contended that both the plaintiff and the defendant are in the business of rice and the plaintiff’s trade mark is synonymously well-known rice brand. The defendant is also selling the rice under the brand name "MOTHER LAND" using the map, logo and the expression "Mother", the act of the defendant amounts to infringement of the right granted in favour of the plaintiff under the Trade Marks Act, 1999.

¶50

It is further contention that in a suit relating to infringement of trade mark and suit seeking restraint order from passing off, there is no need to prove the actual monetary loss. It is her contention that the loss to the reputation of the concern is more than sufficient to grant the relief of injunction.

¶51

This Court has considered the contentions raised at the bar and perused the records.

¶52

After going through the materials placed on record, the following points arise for consideration:

¶53

9 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶54

(i) Whether the Trial Court is justified in holding that the plaintiff has acquiesced the act of the defendant in using the trade mark "MOTHER LAND" and thereby, the plaintiff is not entitled to the relief of injunction?

¶55

(ii) Whether the Trial Court is justified in holding that the plaintiff is not entitled to the relief of injunction unless the plaintiff is able to establish the monetary loss?

¶56

The Trial Court has held that the plaintiff has a registered trade mark and copy right over it is also registered. This finding is not under challenge. As rightly contended by the learned counsel for the plaintiff/appellant, the Trial Court has misconstrued the evidence given by the plaintiff in the cross examination. In the cross examination, the plaintiff has made a statement that he is carrying on the business since 1999. Admittedly, the suit is filed in the year 2006. The Trial Court has come to the conclusion that though the plaintiff is carrying on the business since 1999, for seven years, he has not taken any action against the defendant in filing a suit alleging violation of plaintiff's trade mark. The statement made by the plaintiff in the evidence that he has been carrying on the business since 1999 is not a ground to hold that the plaintiff was aware of the alleged infringement by the defendant in the

¶57

10 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶58

year 1999. The plaint does not say that the plaintiff was aware of the alleged infringement since 1999 nor there is any evidence to this effect. However the plaint averment would reveal that the plaintiff came to know about the defendant is using the offending trade mark in 2006.

¶59

This being the position, this Court is of the view that the finding of the Trial Court that the plaintiff has acquiesced the act of the defendant in using the trade mark "MOTHER LAND" is an erroneous. The Trial Court could not have given the finding based on the evidence placed on record.

¶60

Hence, point No.1 is answered in favour of the appellant and against the respondent.

¶61

So far as the second point is concerned, it is again relevant to note that the factor that is required to be considered in a suit of this nature where the party alleges violation of the trade mark, the Court has consider whether the Trade mark claimed by the plaintiff is deceptively similar to the offending trade mark of the defendant. The test that is to be applied is whether the man of ordinary prudence would be misled by the offending trade mark.

¶62

11 -

¶63

NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶64

This Court has examined the registered trade mark as well as the offending trade mark. On perusal of the same, it is very much apparent that the map of India which is very much visible in the trade mark of the plaintiff is also found in the offending trade mark. Ex.P.6 which is the registered trade mark in favour of the plaintiff discloses the Indian map and a picture of a goddess inside that map and the words "MOTHER INDIA" written above the Indian map. In the offending trade mark at Ex.P.20, the Indian map though not drawn in full, nevertheless, southern portion is drawn and inside the southern portion, the picture of goddess is forth coming and above that picture the words "MOTHER LAND" is mentioned. On comparison of both the registered trade mark as well as the offending trade mark, this Court is of the view that prima facie both trade marks looks alike though there are few differences which can be noticed on a closer scrutiny.

¶65

The closer scrutiny though discloses few differences

¶66

here and there, it is quite possible that a man of ordinary prudence would think that both the brands are the same and this is where the plaintiff has got a grievance and when the plaintiffs' trade mark is considered as a whole and compared

¶67

12 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶68

with the trade mark of the defendant, as a whole would lead to the conclusion that the defendant is trying to take advantage of the brand registered by the plaintiff. Hence, this Court is of the view that the Trial Court committed an error in holding that the defendant has not infringed the plaintiff's trade mark.

¶69

So far as the finding of the Trial Court that the plaintiff has not produced any documents relating to the financial loss on account of usage of infringement by the defendant, this Court is of the view that financial loss need not be established by producing the material. The fact that there is a registered trade mark in the name of the plaintiff and the fact that defendant is using almost similar trade mark and that too to sell the rice which the plaintiff is marketing under the registered trade mark, the Court can certainly assume that there is certainly loss of goodwill and reputation in case the rice sold by the defendant does not match with the standard of quality of rice sold by the plaintiff.

¶70

It is also relevant to note that the defendant has taken sufficient steps to market his brand by publishing the brand with the logo in the news papers.

¶71

13 - NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶72

On closer scrutiny of the evidence led by the defendant, it is apparent that the defendant is also selling rice under the brand name "MOTHER LAND". It is also relevant to note that both the plaintiff and defendant are carrying on business in Raichur. The Court can certainly infer that the plaintiff's business is certainly hit to some extent on account of similar appearance of both brands.

¶73

This being the position, this Court is of the view that the Trial Court committed error in holding that the plaintiff is not entitled to the relief and for the reasons already recorded, this Court is of the view that the judgment and decree of the Trial Court are liable to be set-aside and accordingly, set-aside. Accordingly, the suit is decreed as prayed for.

¶74

Learned counsel for the appellant submits that the plaintiff does not press prayer No.v.

¶75

Submission is placed on record.

¶76

14 -

¶77

NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶78

Hence the following:

¶79

ORDER

¶80

(i) Appeal is allowed in part.

¶81

(ii) Prayer No.v is dismissed as not pressed

¶82

(iii) The judgment and decree dated 07.08.2009 on the file of XVIII Additional City Civil Judge, Bengaluru are set-aside in part. The defendant or anybody claiming through him is restrained from infringing the plaintiff's trade mark "MOTHER INDIA" by using the trademark "MOTHER LAND" or any other trade mark which is deceptively similar to the colourable imitation of plaintiff's trade mark "MOTHER INDIA".

¶83

(iv) The defendant or anybody claiming through him is restrained from infringing the plaintiff's copyright "MOTHER INDIA" by using the offending mark "MOTHER LAND" or any other trade mark which is deceptively similar to the colourable imitation of plaintiff's copyright "MOTHER INDIA".

¶84

(v) The defendant or anybody claiming through him is restrained from passing off the plaintiff's trade mark "MOTHER INDIA" by using the trademark "MOTHER LAND" or any other

¶85

NC: 2024:KHC:10144 RFA No. 1241 of 2009

¶86

15 -

¶87

trade mark which is deceptively similar to the colourable imitation of plaintiff's trade mark "MOTHER INDIA".

¶88

(vi) The defendant is directed to surrender to the plaintiff the unused offending trade mark labels, gunny bags, advertisement materials, bill books, hoardings, brochures, visiting cards containing "MOTHER LAND" for destruction.

¶89

(vii) No order as to costs.

¶90

Sd/JUDGE

¶91

GVP

M/S. Sri Lakshminarayana Rice Mill v. M/S. Chandrika Industries

Case brief

What is this about?

What did the court decide?

M/S. Sri Lakshminarayana Rice Mill v. M/S. Chandrika Industries

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

Coram

Case details

Similar cases

Smt Muniyamma Vs Smt Chikka Akkayamma W/O.Late Subbaiah

Sri M Ravi S/O Muniyappa Vs Sri Ashok Nakarani S/O Patel Kanthilal

D Sakamma Vs Smt B T Kempamma @ Mani

Smt. Vasanthi Vinekar Vs K. Narayana Swamy

Sri Anantha Murthy Vs Smt Nagamma

Sri. D E Venkatesh Vs Smt. Rukminiyamma