Allowed

Mr.a.D.Padmasingh Isaac v. M/S. Kalyans Enterprises

Madras HC14 Aug 2019CS/720/2013

Case brief

AI extract

What is this about?

This judgment presumes trademark infringement where a defendant copies a plaintiff's registered mark and visual presentation in the absence of a defense. The plaintiff, holder of registered mark 'AACHI', sought an injunction against 'Jayai Rani Masala' marketed by the defendant.

What did the court decide?

The suit was decreed with costs and an injunction against the manufacture, sale, and offering for sale of goods marked with the infringing label and colour scheme. Compensatory costs of Rs. 50,000 wer

Mr.a.D.Padmasingh Isaac Vs M/S. Kalyans Enterprises — Intellectual Property | Madras HC (2019)

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C.S.No.720 of 2013

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED : 14.08.2019

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CORAM

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THE HONOURABLE MR.JUSTICE KRISHNAN RAMASAMY

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C.S.No.720 of 2013 1.A.D.Padmasingh Issac Trading as Aachi Spices and Foods, Old No.4, New No.181/1, 6^th 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,
6 th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040.
Represented by its Director,
Ashwin Pandian. ... Plaintiffs
Vs.
M/s.Kalyan's Enterprises,
No.27, Lakshmipuram,
Vadapalani, Chennai – 600 026. ... Defendant

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Plaint filed under Order VII Rule 61 C.P.C. read with Order IV Rule 1 of the High Court Original Side Rules praying for:

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(a) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the defendant's shown in Document No.2 or any other

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similar Trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trademark which is in any way visually or deceptively or phonetically similar to the plaintiffs' trademark AACHI MASALA KULAMBU CHILLY POWDER as shown in Document No.1 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 trademark which is in any way visually, or phonetically similar to the plaintiffs' registered trademark No.1318495, or in any manner infringe the plaintiff's registered trademark.

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(b) granting a permanent injunction restraining the defendant by itself, its servants, agents, distributors, or anyone claiming through him from manufacturing, selling, advertising and offering for sale using same or similar get up, and colour scheme used by the defendant shown in Document No.2 or any other similar trademark or in any media and use the same in invoices, letter heads and visiting cards or by using any other trademark which is in any way visually or deceptively or phonetically similar to the plaintiff's trademark AACHI MASALA KULAMBU CHILLY POWDER as shown in Document No.1 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

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by using any other trademark which is in any way visually, or phonetically similar to the plaintiff's trademark AACHI MASALA KULAMBU CHILLY POWDER as shown in Document No.1, or in any manner pass off 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 JAYAI RANI MASALA and packets in the color scheme and get up as shown in Document No.2 or other deceptively similar trademark used in the pouches and packets in respect of 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 and get up as shown in Document No.2 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 may deem fit and proper in the circumstances of the case and thus render justice.

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For Plaintiff : M/S.C.Daniel & Gladys Daniel For defendant : Set ex-parte vide order dated 10.07.2019

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C.S.No.720 of 2013

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J U D G M E N T

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The suit have been filed by the plaintiffs for the relief of

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permanent injunction and such other reliefs more fully described in the prayer portion of this judgment.

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The first plaintiff originally started trading under the name and style of Abishek Enterprises. The first plaintiff was engaged in the business of manufacturing and marketing spices and condiments under the trademark AACHI. The mark was first adopted in the year 1995. The trading style of the first plaintiff was subsequently changed to Naveen Enterprises which was a partnership firm of the first plaintiff along with his mother in law Mrs.Rani Pandian. This partnership was dissolved on 31.03.2007 as evidenced by Ex.P4. Subsequently, AACHI Spices and Foods was formed. The first plaintiff trading as AACHI Spices and Foods was registered under the CST on 28.12.2006 and 03.01.2007 respectively Ex.P6. Both Abhishek Enterprises and Naveen Products assigned the trademark AACHI used by them in favour of the first plaintiff as evidenced by Exs.P3 & P4. With the growth of the organization Nazareth Foods Pvt.Ltd., was incorporated to undertake the manufacturing activities.

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C.S.No.720 of 2013

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One of the marks used by the plaintiffs for Kulambu Chilly Powder since 10.05.2002 was applied on 01.11.2004, after the mark acquired distinctiveness. The registration was granted in favour of the first plaintiff and the first plaintiff is the registered proprietor of the trademark AACHI as depicted in Ex.P16 and as registered under Ex.P17.

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The second plaintiff was incorporated to both market and manufacture the AACHI products of the first plaintiff. The incorporation certificate of the second plaintiff is Ex.P2. The second plaintiff is the licensee of the first plaintiff. Exs.P9 and P14 are the licenses granted by the first plaintiff in favour of the second plaintiff. The certificate of commercial tax of the second plaintiff is Ex.P8. Aachi Masala Foods Pvt.Ltd., also assigned the Trademark AACHI in favour of the first plaintiff in Ex.P7.

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Aachi Spices and Foods Private Limited was incorporated under Ex.P11. Aachi Spices and Foods Private Limited also uses the

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trademark AACHI in the course of trade under license from the first plaintiff Ex.P13.

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The plaintiffs have been manufacturing and marketing spices and other food products since 1995 for the past 25 years under the trademark AACHI. The plaintiffs are manufacturing spices and condiments in 433 packaging as seen in Ex.P10. The turnover of the plaintiffs in the year 2006 was about Rs.230 crores. The plaintiffs have advertised the trademark AACHI as seen in Ex.P15. The mark AACHI acquired tremendous reputation and goodwill and the trade and public associate the trademark AACHI only with the plaintiffs. In fact, the mark AACHI has been registered in several countries around the world as seen in Ex.P18.

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While so, the plaintiffs came to know of the use of the trademark Jaya Rani Masala with respect to Kulambu Chilly Powder in July 2013. The plaintiffs came forward with the above suit in September 2013. On 04.11.2013, exparte order of interim injunction was granted in favour of the plaintiffs. The order of interim injunction is still in force.

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After the admission of the suit, the suit summons was served on the sole defendant on 14.11.2013. In spite of the service of the suit summons, the defendant failed to appear before this

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Court. Therefore, the sole defendant was set ex-parte vide order dated 10.07.2019 and the suit was directed to be placed before the learned Additional Master for recording ex-parte evidence. Before the learned Additional Master, on behalf of the plaintiff one Mr.B.Gnanasambandam, was examined as P.W.1 and Exs.P1 to P19

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were marked.

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It has already been set out supra that as many as 19 exhibits, namely Exs.P1 to P19 have been marked and the details of

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the 19 exhibits are as follows:

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S.No.	Exhibits	Description of Documents
1	P1	The original Authorisation Letters dated 15.07.2019 & 16.07.2019
2	P2	The photocopy of the Incorporation certificate of Aachi Masala Foods (p) Ltd., dated 30.06.2006.
3	P3	The photocopy of the Deed of Assignment between Abishek Enterprises and Aachi Masala Foods (p) Ltd dated 01.12.2006.
4	P4	The photocopy of the dissolution deed between Mrs.Rani Pandian and the Mr.A.D.Padmasingh Issac dissolving the partnership firm, Naveen Products dated 31.03.2007.
5	P5	The copy of the deed of assignment between Naveen products and Aachi Masala Foods Pvt. Ltd., dated 01.12.2006.
6	P6	The photocopy of the certificate of Commercial Tax Registration and Central Sales Tax of Aachi Spices and Foods dated 28.12.2007 and 03.01.2007.
7	P7	The copy of the deed of assignment between

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C.S.No.720 of 2013

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S.No. Exhibits	Description of Documents
	Aachi Masala Foods Pvt. Ltd and Mr.A.D.Padmasingh Issac trading as Aachi Spices and Foods dated 30.03.2007.
8 P8	The photocopy of the certificate Commercial Tax Registration of Aachi Masala and Foods (P) Ltd., dated 10.07.2006.
9 P9	The photocopy of the trademark license used agreement between Mr.A.D.Padmasingh Issac trading as Aachi Spices and Foods and Aachi Masala Foods (P) Ltd., dated 01.04.2007.
10 P10	The printout copy of the list of products manufactured and marketed by the plaintiffs bearing the trademark AACHI.
11 P11	The photocopy of the certificate of incorporation of Aachi Spices and Foods (P) Ltd., dated 17.03.2010.
12 P12	The photocopy of the memorandum of association of Aachi Spices and Foods P Ltd., dated 06.03.2010.
13 P13	The photocopy of the trademark license user agreement between Mr.A.D.Padmasingh Issac and Aachi Spices and Foods (P) Ltd., dated 21.04.2010.
14 P14	The photocopy of the trademark license user agreement between Mr.A.D.Padmasingh Issac and Aachi Masala Foods (P) Ltd., dated 21.04.2010.
15 P15	Certified copy of the plaintiffs advertisement in RITZ Magazine.
16 P16	The original plaintiffs' Label Aachi Masala Kulambu Chilly Powder.
17 P17	The photocopy of the Legal Use Certificate of Trademark No.1318495 in Class 30, dated 01.11.2004.
18 P18	The photocopy of the Registration certificate of the mark AACHI in various countries around the world.
19 P19	The original defendant's Label Jayai Rani Masala.

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C.S.No.720 of 2013

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Heard the learned counsel for the plaintiffs and also gone through the averments in the plaint and the proof affidavit and also perused the Ex.P.1 to P.19.

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On perusal of Ex.P18, this Court is of the view that the trademark 'Aachi' of the plaintiffs is a registered trademark. Plaintiffs' registration in Class 30 is vide Trademark No.1318495 and the Legal Use Certificate [Trademark Registration Certificate] for this has been marked as Ex.P17. Further, the plaintiffs also filed their photo copy of the name board and the same is marked as Ex.P.16 and the defendant's photo copy of the name board as Ex.P.19. The trademark adopted by the defendant is both visually, phonetically and deceptively similar to that of the plaintiffs. On perusal of Exs.P16 and P19, it is seen that the defendant is not only copying the trademark of the plaintiffs 'Aachi' but also copying the colour scheme and get up. Therefore, this Court found that the defendant's copying the plaintiffs trademark 'Aachi' will amount to infringement of the trademark, as stated in Section 29 of the Trademarks Act. Accordingly, the plaintiffs proved the claim. Therefore, the plaintiffs are entitled to the decree as prayed for.

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C.S.No.720 of 2013

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Learned counsel for plaintiffs requests this Commercial Division to consider imposing compensatory costs/exemplary costs on defendant in the light of conduct of the defendant which has been referred to supra. Learned counsel also pointed out that the defendant has compelled plaintiffs to carry this matter for a substantial time in this Court, expending money, energy and effort. Reference to Section 35-A 'The Code of Civil Procedure, 1908' ('C.P.C.' for brevity) as amended by 'The Commercial Courts Act, 2015' ('said Act' for brevity) was also made. Section 35-A provides for compensatory costs in respect of false or vexatious defences. In the instant case, defendant pursuing the trademark registration applications on the teeth of opposition, but evading conventional modes of service, compelling substituted service and not appearing before this Court even after service being effected through substituted service, in the considered view of this Commercial Division will qualify as a vexatious defence (within the meaning of Section 35-A of amended CPC as amended by said Act) as it is a vexatious manner of defending a suit. Be that as it may, in the light of the trajectory and in the light of the defendant's approach to this suit, this Commercial Division is convinced that it is appropriate to

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impose compensatory costs of Rs.50,000 (Rupees Fifty Thousand only) on the defendant.

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13. Plaintiffs will obviously be entitled to costs as the

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plaintiff has incurred substantial expenditure in carrying this suit to its logical end.

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Suit is decreed with costs and compensatory costs as
set out supra.
14.08.2019
AT

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C.S.No.720 of 2013

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Krishnan Ramasamy,J.

C.S.No.720 of 2013

14.08.2019

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Mr.a.D.Padmasingh Isaac v. M/S. Kalyans Enterprises

Case brief

What is this about?

What did the court decide?

Mr.a.D.Padmasingh Isaac v. M/S. Kalyans Enterprises

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Cases cited

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