Cavinkare Private Limited, Vs Wipro Limited… — Intellectual Property | Madras HC (2018)

Cavinkare Private Limited, Vs Wipro Limited… — Intellectual Property | Madras HC (2018)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED: 15.11.2018

Coram

The Hon'ble Mr. Justice M.M.SUNDRESH and

The Hon'ble Mr. Justice KRISHNAN RAMASAMY

C.S.Nos.1006 of 2009, 221 and 222 of 2010
and
W.P.Nos.23855 of 2012 and 15387 of 2013
and
W.M.P.Nos.32564 and 31199 of 2018

C.S.No.1006 of 2009
1.UNZA International Limited
rep. by its Authorised Signatory
Peeyush Jain

2.WIPRO Limited,
76 P & 80 P, Doddakannelli,
Sarjapur Road, Bangalore - 560 035. .. Plaintiffs
Vs

1.Cavinkare Private Limited
rep. by M.D.Sudharsan,
Vice President - Legal and
Secretarial,
No.12, Cenotaph Road,
Chennai - 18.
2.Spencer's Retail Ltd.,
IV Floor, Spencer Plaza,
769, Anna Salai, Chennai - 2. .. Defendants

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C.S.No.221 of 2010

Cavinkare Private Limited, No.12, Cenotaph Road, Chennai - 18.

.. Plaintiff

Vs

1.Wipro Enterprise Pvt. Ltd., No.33/34, Ganesh Nagar GK Industrial Estate, Alapakkam, Chennai - 116. 2.Wipro Chandrika Private Limited, Doddkannelli, Sarjapur Road, Bangalore - 560 035. .. Defendant (Amended as per order dated 24.10.2018 in A.No.8089 of 2018; D2 impleaded as per order dated 14.06.2011 in A.No.2071 of 2010; Amended as per order dated 30.10.2018 in A.No.8390 of 2018)

C.S.No.222 of 2010

Cavinkare Private Limited, No.12, Cenotaph Road, Chennai - 18 rep. by its Vice President (Legal and Secretarial) M.D.Sudharsan .. Plaintiff Vs Wipro Enterprise Pvt. Ltd., rep. by its Manager (Legal) Peeyush Jain .. Defendant (Amended as per order dated 24.10.2018 in A.No.8090 of 2018)

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W.P.No.23855 of 2012:

Cavinkare Private Limited, No.12, Cenotaph Road, Chennai - 18.

.. Petitioner

Vs.

1.Wipro Limited, 33/34, Ganesh Nagar, G.K.Industrial Estate, Alapakkam, Chennai - 116.

2.Intellectual Property Appellate Board, 2nd Floor,

Annex 1, Guna Complex, 443, Anna Salai, Chennai - 18 rep. by its Deputy Registrar

3.Registrar of Trademarks, Trademarks Registry, Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M.Road, Antop Hill, Mumbai - 400 037.

4.Deputy Registrar of Trademarks, Trademarks Registry, IP Building, GST Road, Guindy, Chennai - 32. .. Respondents

W.P.No.15387 of 2013

Wipro CHANDRIKA Private Limited, Doddakannelli, Sarjapur Road, Bangalore - 560 035. .. Petitioner

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Vs.

1.The Deputy Registrar, Intellectual Property Appellate Board, Annexe 1, Guna Complex, II Floor, 443, Anna Salai, Teynampet, Chennai - 18.

2.Registrar of Trademarks, Trade Marks Registry, Mumbai.

3.The Deputy Registrar of Trademarks,

The Trademark Registry, Chennai.

4.Cavinkare Private Limited, No.12, Cenetoph Road, Chennai - 600 018.

.. Respondents

Prayer in C.S.No.1006 of 2009

Civil Suit filed under Order IV Rule I of O.S. Rules and Order VII Rule 1 CPC read with Sections 27(2), 29, 134 and 135 of The Trade Marks Act, 1999 praying for:

(a)A permanent/ perpetual injunction restraining the defendants, their promoters, assignees, successors-in-interest, licensees, franchisees, partners, representatives, manufacturing, storing, selling, advertising and offering for sale using the registered Trade Mark ENCHANTEUR or ENCHANTE upon deodorants and talcum powder or

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any goods or in any media and use the same in invoices, letter heads and visiting cards or by using any other trade mark with prefix or suffix with the expression ENCHANTE or any other similar sounding expression which is in any way visually, phonetically or deceptively similar to the plaintiff's registered trade mark ENCHANTEUR or in any manner infringing the plaintiff's registered trademark No.1178832.

(b)for permanent/perpetual injunction restraining the defendants, their promoters, assignees, successors-in-interest, licensees, franchisees, partners, representatives, servants, distributors, employees, agents or anyone claiming through them from passing off in any manner the 1st plaintiff's trade mark/name ENCHANTEUR or any deceptive variations thereof or other words and/or logo singularly or in conjunction with any other word or monogram/logo identical or deceptively similar thereto as a trade mark, service mark, trade name, trading style, or in any other manner whatsoever in relation to or upon any goods and/or services whatsoever;

(c)directing the defendants to surrender to the plaintiffs all the products, packing materials, cartons, advertisement materials and hoardings, letter heads, visiting cards, office stationery and all other materials containing/bearing the Trade Mark ENCHANTEUR or other deceptively similar Trade Marks;

(d)for a preliminary decree in favour of the plaintiffs, directing the defendants to render an account of profits made by them by the use of the mark ENCHANTE on the goods referred and for a final

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decree in favour of the plaintiff for the amount of the profits found to have been made by the defendants, after the defendants have rendered accounts;

(e)directing the defendants to pay to the plaintiffs the costs to the suit.

Prayer in C.S.No.221 of 2010:

Civil Suit filed under Order IV Rule I of O.S. Rules and Order VII Rule 1 CPC read with Sections 27, 134 and 135 of The Trade Marks Act, 1999 praying for:

(a)A perpetual injunction restraining the defendant, its distributors, stockiest, servants, agents, retailers, representatives or any other person claiming under/through them from in any manner infringing the plaintiff's registered trademark "Fairever" by manufacturing, selling, offering for sale, stocking, advertising, either directly and/or indirectly any goods and in particular any cosmetic products including soap under the trademark "Forever" either per se or in combination and/or any other mark either in English or Hindi or any other language, which is identical with and/or deceptively similar to plaintiff's registered trademark "Fairever"or in any other manner whatsoever;

(b) A perpetual injunction restraining the defendant, its distributors, stockiest, servants, agents, retailers, representatives or any other person claiming under/through them from in any manner

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manufacturing, selling, offering for sale, stocking, advertising, either directly and/or indirectly any goods and in particular any cosmetic products including soap under the trademark "Forever" either per se or in combination and/or any other mark either in English or Hindi or any other language which is identical with or deceptively similar to the plaintiff's trademark "Fairever" so as to pass off the defendant's products as and for the products of the plaintiff or in any other manner whatsoever connected with the plaintiff.

(c) The defendant be ordered to surrender to plaintiff for destruction all packed goods, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trademark "Forever" either per se or in combination in English or Hindi or any other other language;

(d) A preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of trademark "Fairever"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;

(e) The defendant be ordered and decreed to pay to the plaintiff a sum of Rs.15,00,000/- as damages for acts of passing off and infringement of trademark committed by the defendant.

(f) for costs of the suit.

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Prayer in C.S.No.222 of 2010:

Civil Suit filed under Order IV Rule I of O.S. Rules and Order VII Rule 1 CPC read with Sections 27, 134 and 135 of The Trade Marks Act, 1999 praying for:

(a)A perpetual injunction restraining the defendants, its distributors, stockists, servants, agents, representatives or any other person claiming under/through them from in any manner manufacturing and/or selling and/or offering for sale, advertising either directly or indirectly, any goods and in particular any cosmetic products including Talcum Powder and Deodorant under the trademark "Enchanteur" which is identical with or deceptively similar to the plaintiff's trademark "Enchante" so as to pass off the defendant's goods and for that of the plaintiff's or any other manner whatsoever connected with the plaintiff;

(b)The defendant be ordered to surrender to plaintiff for destruction all packed goods, labels, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trademark "Enchanteur";

(c)A preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of trade mark "Enchanteur" 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;

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(d)The defendant be ordered and decreed to pay to the plaintiff a sum of Rs.15,00,000/- as damages for acts of passing off committed by the defendant;

(e)for costs of the suit;

Prayer in W.P.No.23855 of 2012:

Writ Petition filed under Article 226 of The Constitution of India praying for the issuance of a writ of certiorari calling for the records of the second respondent comprised in ORA Nos.97 to 100/2010/TM/CH and quash the common order dated 10.08.2012 passed by the second respondent Board in ORA Nos.97 to 100/2010/TM/CH insofar as it relates to the rectification of the petitioner's registrations under Nos.1249412, 101481, 810756 and 1255978.

Prayer in W.P.No.15387 of 2013:

Writ Petition filed under Article 226 of The Constitution of India praying for the issuance of a writ of certiorari calling for the records on the file of the first respondent pertaining to ORA/246/2010/TM/CH and quash the common order dated 10.08.2012 passed by the first respondent insofar as it has rectified the registration of the petitioner pertaining to Application No.1615601 in Classes 3 and 5 in respect of all kinds of soaps including toilet soaps and toiletary preparations in Class 3 and medicated toiletary preparations like soaps, shampoos, handwash, sanitizers etc., in Class 5.

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C.S.No.1006 of 2009

For Plaintiffs .. Mr.C.Daniel

For Defendants

.. Mr.R.Parthasarathy

C.S.Nos.221 and 222 of 2010

For Plaintiffs .. Mr.R.Parthasarathy For Defendants .. Mr.C.Daniel

W.P.No.23855 of 2012

For Petitioner .. Mr.Madhan Babu For Respondents .. Mr.C.Daniel for R1 Mr.T.L.Thirumalaisamy, CGSC for R2 to R4

W.P.No.15387 of 2013

For Petitioner .. Mr.C.Daniel

For Respondents .. Mr.T.L.Thirumalaisamy, CGSC for R1 to R3 Mr.R.Parthasarathy for R4

COMMON JUDGMENT

(Judgment of the Court was delivered by M.M.SUNDRESH, J. )

When these matters are taken up for hearing, learned counsel appearing for the parties submit that the matter has been resolved

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pursuant to the compromise memo signed by the parties in the month of July 2018. The aforesaid memo of compromise along with respective covenants are also filed with Annexures A and B. The terms of memo of compromise read as under:

“STATEMENT WITH RESPECT TO THE TRADEMARKS ENCHANTEUR/SPINZ enchante

A. THAT the Party of the Fourt Part agrees to use the mark SPINZ ENCHANTE only in conjunction with their mark SPINZ in respect of Perfumes, Colognes, Deodorants, Antiperspirants, Body Lotions, Facial creams, Facial pack, False Eye Lashes, False Nails, Foundation Make up, Hair colourants, Hair remover, Hair spray, Hand/leg lotion, Lip Gloss, Lip Stick, Mascara, Nail Enamel, Nail Polish, Nail Polish remover, Vanishing cream, Talcum Powder, Preparations (non medicated) for use in face, hair conditioner, hair dye, hair gel, hair oil, makeup removing preparations, moisturizer, nail varnish, petroleum jelly, punice stone, rose oil, rouge, shampoo, skin care preparations, deostick aftershave, chapstick, cleansing milk, cold cream, cream, cream for whitening the skin, dentrifices, denture polish, depilatories, depilatory preparations, depilatory wax, eye brow pencil, eye liner, eye shadow, facial bleach, soaps, essential oils, cosmetics and toiletries preparations and the party of

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the first and second party has no objection to the use of the mark SPINZ Enchante for the said products including in respect of any promotion, advertisements, public notices etc.

B. THAT the party of the fourth part agrees not to use the variant ENCHANTE as a standalone mark as it is used only as variant name for the brand SPINZ. The party of the fourth part has right to continue to use Enchante as variant name and it will be used in conjunction with the trademark SPINZ as done at present.

C. THAT the party of the fourth part undertakes to use the mark ENCHANTE and SPINZ only as depicted in ANNEXURE-A wherever used.

D. THAT the party of the fourth part undertakes not to ever extend the use of ENCHANTE variant, in conjunction with any other mark to products other than Perfumes, Colognes, Deodorants, Antiperspirants, Body Lotions, Facial creams, Facial pack, False Eye Lashes, False Nails, Foundation Make up, Hair colourants, Hair remover, Hair spray, Hand/leg lotion, Lip Gloss, Lip Stick, Mascara, Nail Enamel, Nail Polish, Nail Polish remover, Vanishing cream, Talcum Powder, Preparations (non medicated) for use in face, hair conditioner, hair dye, hair gel, hair oil, makeup

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removing preparations, moisturizer, nail varnish, petroleum jelly, punice stone, rose oil, rouge, shampoo, skin care preparations, deostick aftershave, chapstick, cleansing milk, cold cream, cream, cream for whitening the skin, dentrifices, denture polish, depilatories, depilatory preparations, depilatory wax, eye brow pencil, eye liner, eye shadow, facial bleach, soaps, essential oils, cosmetics and toiletries preparations. THAT the party of the first and second part agrees and have no objection to the use of the Trademark variant SPINZ Enchante in conjunction as agreed in paragraphs A to D above.

E. THAT the party of the fourth part agrees and has no objection to the use of the Trademark ENCHANTEUR used by the Party of the First and Second Part for Talcum Powder, Deodorants & Perfumes, Soaps, Essential Oils, Ean De Cologne, Eau De Toilette, Preparations (Non medicated) for use on the face skin

and body, hair lotions, mousses, conditioners and shampoos, preparations for use in the bath and shower, face wash, tooth paste & toiletries, body sprays, liquid soaps, handwash, gels & cosmetic products.

F. THAT the party of the first and second part undertake not to ever extend the use of the Trademark ENCHANTEUR, either in isolation or in conjunction with

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any other mark to products other than those mentioned in Paragraph E above.

SETTLEMENT WITH RESPECT TO THE TRADEMARKS FAIREVER/FOREVER

G. THAT the party of the third part agrees to use the Trademark CHANDRIKA FOREVER as whole mark under classes 3 & 5 only in respect of all kind of toilet soaps, liquid soaps and medicated soap, handwash and sanitizers in all cases.

H. THAT the party of the third part agrees not to use the Trademark FOREVER as a standalone Trademark as the mark is used only in conjunction with the brand CHANDRIKA.

I. THAT the party of the third part undertakes to use the Trademark CHANDRIKA and FOREVER in ANNEXURE-B wherever used.

J. THAT the party of the third part undertakes not to ever extend the use of FOREVER, either in isolation or in conjunction with any other mark to products other than all kind of soaps including toilet soaps, liquid soaps and medicated soap, handwash and sanitizers in all cases. THAT the party of the fourth part agrees and have no objection to the use of the Trademark

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CHANDRIKA FOREVER only as agreed in Annexure – B in accordance with the MEMO OF COMPROMISE.

K. THAT the party of the first and third part have no objection to the use of the trademark FAIREVER and further also have no objection whatsoever to any new application made by the party of the fourth part for registration of any mark/label or device which comprises of the mark fairever in any manner whatsoever in respect of skin lotions, cream, antiperspirants, hair care preparations, facial bleach, cleansing milk, fairness cream, facial leach, moisturizers, cold cream, vanishing cream, facial cream, cosmetics and toiletries preparations.

L. THAT the party of the fourth part has no objection for setting aside the order dated 10^th August 2012 in ORA No. 246/2010/TM/CH and restoring the registration secured by the party of the third part under No. 1615601 in classes 3 & 5 in respect of all kinds of soaps including toilet soaps, liquid soaps and medicated soap, handwash and sanitizers in all cases with respect to the Trademark CHANDRIKA FOREVER and in such manner disposing off Writ Petition No. 15387 of 2013.

M. THAT in view of the above, the party of the first part has no objection for setting aside the order dated 10^th August 2012 in ORA no. 97-100/2010/TM/CH and

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restoring the registration secured by the party of the fourth part under Nos. 810756, 1014841, 1255978 & 1249412 with respect to the trademark FAIREVER and in such manner disposing of WP No. 23855 of 2012.

N. The Party of the fourt part shall also have no objection whatsoever to any new application made by the party of the first and third part for registration of any mark/label or device which comprises of the mark CHANDRIKA FOREVER as whole mark for the products listed in Paragraphs G & J above..

O. The party of the first and third part shall also have no objection whatsoever to any new application made by the Party of the Fourth Part for registration of any mark/label or device which comprises of the mark FAIREVER in any manner whatsoever.

P. THAT parties to the memo compromise clarify that the grounds on which the marks were rectified including Association of the marks/User Affidavit filed with the Registered marks under 810756, 1014841, 1255978, 1249412 & 1615601 shall stand withdrawn as not maintainable.

MISCELLANEOUS

Q. THAT the party of the first and second part are giving up Defendant No. 2 Spencer Retail Limited arrayed as 2^nd defendant in C.S.No.1006 of 2009.

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R. THAT it is made clear that Respondents 1 to 3 in WP No. 15387 of 2013 are only formal parties and are hence not party to this Memo of Compromise except for restoration of the marks 810756, 1014841, 1255978 & 1249412 as originally existed in the registers before the Writ Petition/Suits were filed by and between the Parties.

S. THAT it is made clear that respondents 2 to 4 in WP No. 23855 of 2012 are only formal parties and are hence not party to this Memo of Compromise except for restoration of the mark 1615601 as originally existed in the registers before the Writ Petition/Suits were filed by and between the Parties.

T. THAT the following suits and writ petitions stated hereunder may be decreed/disposed off in terms of this Memo of Compromise and that the Memo of Compromise may form part of the decree/order. (Suits and Writ Petition)

Sl. No.	Plaintiff/Petitioner	Defendant/ Respondent	Case No.	Trademark
1.	UNZA International Ltd Wipro Enterprises Ltd	Cavinkare Pvt Ltd. & Anr.	CS No. 1006 of 2009	Enchanteur/ Spinz Enchante
2.	Cavinkare Pvt. Ltd.	Wipro Ltd.	CS No. 221 of 2010	Fairever/ Chandrika a Forever/Forever

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Sl. Plaintiff/Petitioner Defendant/ Case No. Trademark
No. Respondent
3. Cavinkare Pvt. Ltd. Wirpro Ltd. CS No. Enchanteur/
222 of Spinz Enchante
2010
4. Cavinkare Pvt. Ltd. Wipro Ltd. & WP No. Forever/
3 others 23855 of
Fairever
2012
5. Wipro Chandrika Cavinkare WP No. Fairever/
Ltd. Pvt. Ltd. & 3 15387 of
Forever
others 2013
2.In such view of the matter, C.S.No.1006 of 2009 stands
decreed as per the memo of compromise signed by the parties in the
month of July 2018. The memo of compromise shall form part of the
decree. Consequently, C.S.Nos.221 and 222 of 2010 stand dismissed
and W.P.Nos.23855 of 2012 and 15387 of 2013 stand closed. No
costs. Consequently, connected miscellaneous petitions are closed.
(M.M.S.J.,) (K.R.J.,)
15.11.2018
Index:Yes/No
mmi

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To

1.The Deputy Registrar, Intellectual Property Appellate Board, 2nd Floor,

Annex 1, Guna Complex, 443, Anna Salai, Chennai - 18.

2.The Registrar of Trademarks,
Trademarks Registry,
Intellectual Property Bhavan,
Near Antop Hill Head Post Office,
S.M.Road, Antop Hill,
Mumbai - 400 037.
3.The Deputy Registrar of Trademarks,
Trademarks Registry,
IP Building, GST Road, Guindy,
Chennai - 32.

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M.M.SUNDRESH, J. and KRISHNAN RAMASAMY, J.

mmi
C.S.Nos.1006 of 2009, 221
and 222 of 2010
and
W.P.Nos.23855 of 2012 and
15387 of 2013
15.11.2018

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