Partly allowed

Mr.a.D.Padmasingh Isaac v. M/S.Sri Aachi Appalam

Madras HC26 Sept 2018CS/687/2015

Case brief

AI extract

What is this about?

The High Court of Judicature at Madras disposed of a trademark infringement and passing-off suit via summary judgment. The defendant admitted it ceased business in November 2015, rendering the suit infructuous. The court granted permanent injunctions (limbs a and b) dismissing other prayers for surrender of materials, accounts of profits, and costs.

What did the court decide?

Permanent injunctions restraining manufacturing, selling, advertising, and offering for sale using the marks AACHI and AACHI APPALAMS. Other prayers for account of profits and surrender of materials d

Mr.a.D.Padmasingh Isaac Vs M/S.Sri Aachi Appalam — Intellectual Property | Madras HC (2018)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED : 26.09.2018

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CORAM

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THE HON'BLE Mr.JUSTICE M.SUNDAR

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C.S.No.687 of 2015 AND O.A.No.898 of 2015 AND A.Nos.5612 of 2015 & 6957 of 2018

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1.Mr.A.D.Padmasingh Issac, Trading as Aachi Spices and Foods, Old No.4, New No.181/1, 6th Avenue, Thangam Colony, Anna Nagar, Chennai � 600 040.

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2.M/s.Aachi Masala Foods (P) Ltd., Old No.4, New No.181/1, 6th Avenue, Thangam Colony, Anna Nagar, Chennai � 600 040 Represented by its Director Mr.Ashwin Pandian. .. Plaintiffs

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Vs M/s.Sri Aachi Appalam No.1/162, kaluvudayan Kovil Street, Chinthamani, Madurai � 625 009. .. Defendant

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This Civil Suit is preferred, under Order IV, Rule 1 of the Original Side Rules and order VII, Rule 1 of the C.P.C read with Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999, seeking to grant permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him form manufacturing, selling, advertising and offering for sale using same or similar Trade Mark AACHI/AACHI APPALAMS/SRI AACHI APPALAMS or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs' registered trade mark AACHI and AACHI APPALAMS with respect to appalams or in relation to any masala items and use the same pouches, packets of masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plantiffs' registered Trade Mark Nos.838786, 1318494, or in any manner infringe the Plaintiff's registered Trade Mark; to grant permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him form manufacturing, selling, advertising and offering for sale using same or similar

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Trade Mark AACHI/AACHI APPALAMS/SRI AACHI APPALAMS by the Defendant or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs' trade mark AACHI and AACHI APPALAMS with respect to appalams or in relation to any masala items and use the same pouches, packets of masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plaintiffs' Trade Mark AACHI and AACHI APPALAMS or in any manner pass of the Plaintiff's goods; direction to the Defendant to surrender to the Plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name SRI AACHI APPALAMS or other deceptively similar trade mark used in the pouches and packets in respect of appalams and masalas; direction to the Defendant to render an account of profits made by them by the use of the impugned trademark SRI AACHI APPALAMS on the goods referred and decree the suit for the profits found to have been made by the Defendant, after the Defendant has rendered accounts and direction to the Defendant to pay to the Plaintiffs the costs to the suit.

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For Plaintiffs : Ms.S.Bhuvaneswari for M/s.Gladys Daniel

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For Defendant : Mr.R.Uma Shankar for M/s.Sri & Shankar Associates

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J U D G M E N T

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There are two plaintiffs and a sole defendant in this suit. Ms.S.Bhuvaneswari, learned counsel representing the counsel on record for the two plaintiffs and Mr.R.Uma Shankar, learned counsel on record for the sole defendant are before this Commercial Division.

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2.Both the learned counsel requested that the main suit itself can be disposed of in the light of the stand that is being taken by the sole defendant.

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3.Both the learned counsel drew my attention to Order XIII-A of 'The Code of Civil Procedure, 1908' ('CPC' for brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity). Drawing my attention to Rule 3 of Order XIII-A of amended CPC as amended by said Act, both learned counsel submitted that this is a fit case for summary judgment as the defendant has no real prospect of successfully defending the claim (in the light of the stand which the defendant has taken vide memo dated 07.08.2018). It was also submitted by both learned counsel that there is no other compelling reason as to why the claim of the plaintiff should not be disposed of before/without recording oral evidence.

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4.In the light of the aforesaid memo dated 07.08.2018 filed by the sole defendant and reiterated in the hearing today about which, there shall be elaboration in the latter part of the judgment infra and in the light of the stand taken by the sole defendant, learned counsel for plaintiffs submitted that she would be pursuing only limbs (a) and (b) of the prayer paragraph in the plaint and would be giving up limbs (c) to (f) of the prayer paragraph. In the light of this submission, I am of the view that it is necessary to extract the entire prayer paragraph in the plaint. Prayer paragraph in the plaint is paragraph No.30 and the same reads as follows :

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'(a) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him form manufacturing, selling, advertising and offering for sale using same or similar Trade Mark AACHI / AACHI APPALAMS/ SRI AACHI APPALAMS or in

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any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs' registered trade mark AACHI and AACHI APPALAMS with respect to appalams or in relation to any masala items and use the same pouches, packets of masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other tade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plantiffs' registered Trade mark Nos.838786, 1318494, or in any manner infringe the Plaintiff's registered Trade Mark.

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(b) granting a permanent injunction, restraining the Defendant, by itself, its servants, agents, distributors, or anyone claiming through him form manufacturing, selling, advertising and offering for sale using same or similar Trade Mark AACHI / AACHI APPALAMS/SRI AACHI APPALAMS by the Defendant or any other similar Trade Mark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs' trade mark AACHI and AACHI APPALAMS with respect to appalams or in relation to any masala items and use the same pouches, packets of masalas and spices or any other goods or use the same pouches, packets of masalas and spices or any other goods or use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other trade mark which is in any way visually, or phonetically similar to the Plaintiffs' Trade Mark AACHI and AACHI APPALAMS or in any manner pass of the Plaintiff's goods.

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(c) directing the Defendant to surrender to the Plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name SRI AACHI APPALAMS or other deceptively similar trade mark used in the pouches and packets in respect of appalams and masalas.

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(d) directing the Defendant to render an account of profits made by them by the use of the impugned trademark SRI AACHI APPALAMS on the goods referred and decree the suit for the profits found to have been made by the Defendant, after the Defendant has rendered accounts:

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(e) directing the Defendant to pay to the Plaintiffs the costs to the suit, and

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(f) pass such further or other order, as this Hon'ble Court my deem fit and proper in the circumstances of the case and thus render justice.'

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5.A perusal of the prayer paragraph in the plaint would reveal that prayer in the plaint is constituted by six limbs. It would also come to light from the narrative supra that plaintiff is now pursuing only the first two limbs i.e., (a) and (b) and is giving up the remaining four limbs i.e., (c) to (f). Therefore, this suit will now be examined with regard to the aforesaid two limbs of prayer.

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6.Before I do that, it may be necessary to set out a thumbnail sketch/ bird's eye view of the factual matrix of this case for better appreciation of this summary judgment.

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7.Two registered trade marks constitute the nucleus of this suit/lis. Both the registered trade marks stand in the name of the first plaintiff. Both the trade marks are registered in Class 30 of relevant Schedule to Rules under the Trade Marks Act, 1999. One trade mark is trade mark No.838786, the date of registration is 29.01.1999, renewal date is 29.01.2009 and it is valid up to 29.01.2019. In other words, the trade mark registration is subsisting. The certificate number is 716329 and the date of certificate is 28.03.2008. Most importantly, the trade mark type is that of a word mark and the word mark, which has been registered is 'AACHI'. The goods and description of the same as described in the trade mark registration certificate read as 'Masala Powder and Spices'. The other trade mark registration, which constitutes the nucleus of this lis is trademark No.1318494, date of

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registration is 01.11.2004, date of renewal is 01.11.2014 and the registration is valid up to 01.11.2024 . In other words, this registration also is subsisting. The certificate number is 676672 and the date of certificate is 21.02.2008. Thus, registration as per the trade mark registration certificate is a device mark and the word mark AACHI APPALAMS is part of this device i.e., label. The description of goods as contained in the trade mark registration certificate is 'APPALAMS'. Most importantly, the device/label of which, the word mark AACHI APPALAMS forms part and has been registered is as follows:

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8.As already mentioned supra, both the aforesaid trade mark registrations are in Class 30 and both are subsisting. As already alluded to supra, these two trade mark registrations constitute the nucleus of the suit and the same shall hereinafter be referred to as 'suit TMs' for the sake of convenience and clarity.

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9.Considering that this is a summary judgment in the light of the stand taken by the defendant and considering that this is only a thumbnail sketch of facts for appreciation of this summary judgment, suffice to say that the first plaintiff in whose name, the aforesaid 'suit TMs' stand, as licensed, the second plaintiff to use the 'suit TMs'. This has been articulated in paragraph 8 of the plaint and the same reads as follows :

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'8.The 1st Plaintiff is the proprietor of the trademark AACHI. He continues to use the trademark AACHI through his Licensees AACHI Spices and Foods Private Limited and the 2nd Plaintiff.'

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10.It is the case of the plaintiffs that they have been using 'suit TMs' with regard to several preparations from the commencement of their business. It is also their further say of the plaintiffs that owing to the efforts taken by the plaintiffs, the turnover of the second plaintiff Company has increased substantially. Most importantly, it is the specific plea of the plaintiffs that they have incurred huge promotional expenditure through their advertisement agencies to popularise the 'suit TMs'. The details of turnover and advertisement expenditure incurred in the financial years between 1995 and 2015 has been set out in tabular form in the plaint and the same reads as follows : S.No. Year TURNOVER (in Rs) ADVERTISING EXPENDITURE (in Rs) 1. 1995-1996 3,96,420.00 9,893.00 2. 1996-1997 4,37,568.00 4,691.00 3. 1997-1998 5,10,755.00 352.00 4. 1998-1999 14,68,159.00 15,820.00

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1999-2000 20,27,457.00 16,775.00 6. 2000-2001 52,03,979.00 57,676.00 7. 2001-2002 64,12,491.00 2,13,512.00 8. 2002-2003 1,69,44,334.00 6,62,290.00 9. 2003-2004 9,00,05,884.00 19,63,479.00 10. 2004-2005 24,46,95,540.00 1,13,28,450.00 11. 2005-2006 79,47,99,230.00 4,63,96,880.00 12. 2006-2007 1,36,54,50,781.00 5,68,45,817.00 13. 2007-2008 2,07,85,55,508.00 7,87,06,261.00 14. 2008-2009 4,14,12,42,106.00 9,40,86,530.00 15. 2009-2010 4,73,98,26,852.00 10,76,86,530.00 16. 2010-2011 6,40,40,45,524.00 11,63,97,497.00 17. 2011-2012 7,59,35,14,309.00

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12,42,15,050.00 18. 2012-2013 8,82,91,64,390.00 13,72,06,476.00 19. 2013-2014 11,27,06,92,876.00 19,57,87,446.00 20. 2014-2015 13,20,61,70,537.00 21,00,17,044.00

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11.In the aforesaid circumstances, it is the case of the plaintiffs that sometime in June 2015, they came across defendant's product bearing the mark 'SRI AACHI APPALAM'. It is submitted by plaintiffs' counsel that product is same i.e., Appalam, which is infringement of 'suit TMs' and plaintiffs' right therein. It is also submitted by learned counsel for plaintiffs that they took efforts to ascertain whether the alleged offending goods originated from defendant and after which, the instant suit was filed.

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12.As would be evident from the details of the two trademark registrations, which constitute the nucleus of the suit, i.e., 'suit TMs', both are in Class 30, while one is for 'Masala Powder and Spices', the other is for 'Appalams'. To be noted, 'spices' has been set out as one of the goods in Class 30. Learned counsel for plaintiffs submits that masala powder would also get classified as spices. Likewise, learned counsel for plaintiffs submitted that appalams found in trademark No.1318494 (one of the two 'suit TMs') qualifies as flour and preparations made from cereals, which is found in Class 30. In other words, though spices finds place as part of the enumeration in Class 30, masala powder and appalam, which do not find place in the enumeration in Class 30, are also entitled to be shown as description of goods in the registered trade mark certificates, as they get classified under one goods or the other in Class 30 is the specific say of plaintiffs counsel. Learned counsel also submits that the Nice classification which is now operating, permits the Trademark Registry to do so. As this position is not disputed by the defendant in the instant case, I deem it appropriate to leave it open in this case. For the purpose of clarity, it is made clear that the question as to whether the Trade Mark Registry is entitled to issue such a registration certificates giving goods and description of the same, which actually do not find place as part of enumeration in any one of the Classes is left open for a debate and decision on the same, if any other litigation takes such trajectory in the future. In other words, it is made clear that this judgment shall not operate as a precedent for the point that the Trade Mark Registry can grant registration to goods and products, which are not specifically enumerated in any one of the 45 Classes.

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13.Be that as it may, it is now necessary to look at the alleged offending mark of the defendant. Alleged offending mark of the defendant is as follows:

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14.Referring to the above, learned counsel for plaintiffs Ms.Bhuvaneswari submitted that plaintiffs have a right qua the word 'AACHI' and therefore, the aforesaid mark being applied by the defendant on the very same product/goods i.e., Appalams for which the plaintiffs have got trade mark registration is certainly infringement and passing off qua suit TMs.

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15.This takes us to the stand taken by the defendant.

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16.As already alluded to supra, sole defendant in this suit has filed a memo dated 07.08.2018, which reads as follows:

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'MEMO FILED BY THE DEFENDANT

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The defendant humbly submits that

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This defendant, on receipt of the summons in the above suit, has stopped its business and closed it completely from November 2015, and as such she is not carrying on business as on date in the above name as alleged by the Plaintiff. Therefore the suit itself becomes infructuous.

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Therefore the defendant humbly prays that this Hon'ble Court may be pleased to record this memo and pass such further or other orders that his Hon'ble Court may deem fit and proper in the circumstances of the case and thus render justice.

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Dated at Chennai on this 7th day of August 2018

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Counsel for Defendant'

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The aforesaid memo is self-explanatory.

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17.A perusal of the aforesaid memo reveals that the defendant had stopped its business, closed it fully from November 2015 and the defendant is not carrying on business, much less with the alleged offending trademark. In the light of the aforesaid stand of the defendant, which is reiterated by Mr.R.Uma Shankar, learned counsel for the sole defendant in the hearing today, plaintiffs are entitled to a decree as prayed for in limbs (a) and (b) of prayer paragraph. To be noted, limbs (a) and (b) of the prayer paragraph or in other words, sub paragraphs (a) and (b) of the prayer paragraphs i.e., paragraph 30 of the plaint pertain to injunctive reliefs regarding infringement and passing off qua �suit TMs� respectively.

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18.As mentioned supra, the plaintiff on instructions is giving up prayers contained in sub paragraphs (c) to (f).

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19.In the light of the narrative supra, this suit is partly decreed in terms of sub paragraphs (a) and (b) of prayer paragraphs in the plaint. Sub paragraphs (c), (d), (e) and (f) of prayer paragraphs in the plaint are dismissed. Obviously, there will be no order as to costs. All interlocutory applications are closed.

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26.09.2018

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Speaking order Index : Yes gya

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M.SUNDAR, J. gya

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C.S.No.687 of 2015

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26.09.2018

Mr.a.D.Padmasingh Isaac v. M/S.Sri Aachi Appalam

Case brief

What is this about?

What did the court decide?

Mr.a.D.Padmasingh Isaac v. M/S.Sri Aachi Appalam

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

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