Dismissed

M/S.D.R.Raanka Bros v. Mr.Om Prakash

Madras HC17 Dec 2019OA/702/2019

Case brief

AI extract

What is this about?

The High Court of Madras examined two interlocutory applications seeking interim injunctions against a respondent alleged to have infringed the petitioner's registered trade marks. The court found no structural, visual, or phonetic similarity between the marks and dismissed the applications.

What did the court decide?

Interim injunction applications dismissed; injunction against respondent withheld.

M/S.D.R.Raanka Bros Vs Mr.Om Prakash — Intellectual Property | Madras HC (2019)

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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Reserved on: 09.12.2019 Pronounced on: 17.12.2019

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Coram::

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The Honourable Dr.Justice G.Jayachandran

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019 M/s.D.R.Raanka Bros., Door No.151, 1^st Floor, N.S.C.Bose Road, Chennai – 600 079, represented by its Partner, Mr.Kapil Ranka. ... Applicant/Plaintiff in both cases /versus/ Mr.Om Prakash, trading as Sri Mahalakshmi DRR Velli Maligai, No.329, Kamaraj Street, Villupuram – 605 602. ... Respondent/Defendant in both cases Common Prayer:- Judges summons under Order XIV and Rule 8 of Original Side Rules read with Order XXXIX Rule 1 & 2 and Section 151 of C.P.C:a). An order of interim injunction restraining the Respondent/Defendant by itself, its servant, agents or any one claiming through it from in any manner infringing the Applicant's registered Trade Marks D.R.RANNKA and D.R., by using the identical and offending mark D.R.R. Or any other mark of marks which are in anyway identical, deceptively similar to or a colorable imitation of the Applicant's said registered Trade Marks, either by manufacturing or selling or offering for sale or advertising or in any manner using the same as or as part of its trademark/tradename/trading style/business name or in any other manner whatsoever pending disposal of the suit;

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https://hcservices.ecourts.gov.in/hcservices/

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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b). An order of interim injunction restraining the Respondent/Defendant by itself, its servant, agents or any one claiming through it from in any manner passing off its products or business or services under the offending mark D.R.R as and for the Applicant's products/business/services under the Marks D.R.RANNKA/D.R/D.R.R by use of the said offending mark as or as part of its trademark/tradename/trading style/business name or in any other manner whatsoever pending disposal of the suit;

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For Plaintiff : Mr.S.Diwakar in both cases For Defendant : Mr.A.K.Rajaraman in both cases J U D G M E N T

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The petitioner is the plaintiff in the main suit filed

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for infringement of trademark and passing off. These two applications are Interlocutory Applications filed for seeking interim relief of injunction restraining the

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respondents/defendants from in any manner use the plaintiff's registered trade marks or part of it and to restrain them from passing off the products or business or service under the offending mark D.R.R as that if the plaintiff's goods.

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2. The case of the applicant is that, it is a

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partnership firm under the name and style of D.R.RAANKA BROS .

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They are the owners of the registered trademark D.R.RAANKA and

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https://hcservices.ecourts.gov.in/hcservices/ D.R. By using the identical and offending mark D.R.R , the

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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respondents infringing the trademark of the applicant. The inferior products of the defendants are passed of, as if the product of the applicant. According to the applicant, they are manufacturing and selling silver articles, ornaments for the past 70 years and also doing online business through their website address www.drsilver.in. The applicant's product is available for purchase across the world by online trade and the products had reputation and good will all over the world. The applicant products are sold under the Tradename/trade style/trade mark D.R.RAANKA/D.R/D.R.R , it has become associated to applicant all over the world. The applicant firm honestly and bonafidely adopted the trademarks D.R.RAANKA/D.R/D.R.R with utmost care continuously without any interruption whatsoever since 1944. To get statutory protection, it applied for registration of the trademark as early as 21.11.1949. The mark was renewed till 2006. Due to oversight, it was not renewed thereafter. However, this earliest registration of the said trademark in favour of the applicant protects their right as a prior user. Having spent considerable amount for promoting and gaining goodwill, the defendants trying to usurp the right over the reputation of the plaintiff by using the trade mark D.R . During the month of December 2017, the applicant came to know that, the respondent misusing the mark D.R in respect of identical business i.e., sale of silver articles. After verification, criminal complaint was registered against the defendants for infringement and passing https://hcservices.ecourts.gov.in/hcservices/ off. The defendants gave an undertaking that, he will change the

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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name by deleting the trademark D.R . Thereafter, the defendants has changed its Tradename as 'Sri Mahalakshmi D.R.R Silver Maaligai'. By retaining the word D.R , the respondents deliberately using the registered trademark of the applicant as part of its tradename. The mark D.R.R. is more prominent and other prefix and suffix are relatively in minuscule font. Thus, the defendants continuously infringing the trademark of the applicant.

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3. It is also stated in the affidavit that, beside the criminal complaint, the Civil Suit in O.S.No.4 of 2018 on the file of District Judge, Villupuram, also filed by this applicant against this respondent for infringement of registered trademarks D.R.RAANKA/D.R . Interim order was granted by this Court vide order dated 03.10.2018 against the respondents restraining him from using the trademark DR.RAANKA/DR . Despite interim order, the respondent is adopting the impugned mark D.R.R . The respondent, without

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any right or authority using phonetically, visually and structurally, identical impugned trademark D.R.R which amounts to infringement of registered trademarks and also passing off respondent products as that of the applicant.

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4. The respondent has filed common counter in both

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https://hcservices.ecourts.gov.in/hcservices/ the applications, wherein, it is stated that, the

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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allegations made in the applications are not correct. The respondent has adopted the mark “SHRI MAHALAKSHMI DRR VELLI MALIGAI” bonafidely and honestly the mark was not copied.

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The term D.R.R derived from the names of partner's father

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D han R aj and son R ahul. The respondent, carrying his business under the name and style of “SHRI MAHALAKSHMI DRR

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VELLI MALIGAI”. Considering the composite nature of the mark, the present suit for infringement and passing off is not maintainable. More so, the Applications seeking injunction restraining the respondent from carrying on trade

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is unsustainable since there is no phonetically, structurally or visually any similarity.

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argued and relied upon the following judgments.

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Plaintiff's:-

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(i). B.K.Engineering Co. Vs. Ubhi Enterprise (Regd) & Another reported in ILR (1985) 1 Delhi .

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(ii). Midas Hygiene Industries (P) Ltd & another Vs. Sudhir Bhatia and others reported in (2004) 3 SCC 90 .

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(iii). Bengal Waterproof Limited Vs. Bombay Waterproof

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manufacturing Company and another reported in (1997) 1 SCC https://hcservices.ecourts.gov.in/hcservices/

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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99 .

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(iv). Gangotree Sweets and Snacks Pvt Ltd. Vs. Shree

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Gangotree Sweets, Snacks & Savouries, Trichy reported in

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(2005) SCC OnLine Mad 862.

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(v). Heinz Italia and another Vs. Dabur India Ltd

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reported in (2007) 6 SCC 1.

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Defendant's:

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(i). Cadila Health Care Ltd Vs. Vadila Pharamaceuticals

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Ltd reported in (2001) 5 SCC 73.

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(ii). Mankind Pharma Ltd Vs. Chandra Mani Tiwari & another

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6. The sum and substance of the dispute is

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regarding the use/misuse of registered trademark of the

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applicant. From the affidavit and the documents produced, this Court finds that, the plaintiff has the registered trademark under clauses 14 & 35 for

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D.R/D.R.RAANKA BROS/D.R/

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. The sign board of the plaintiff firm reads as D.R.RAANKA BROS.

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7. The contention of the plaintiff is that, initially

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the respondent was doing his business under name and style of

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“Mahalakshmi jewels.” Later, he changed the name as “DR https://hcservices.ecourts.gov.in/hcservices/ Thangamallai.” Knowing that, notice through lawyer was issued to

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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the respondent on 24.11.2017 in response to the notice, the

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respondent issued a reply dated 15.12.2017 stating that, he is not using the trademark of the applicant. His business is in the name

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and style of “DR Thanga Maligai”, which denotes his father's name DhanRaj. Thereafter, when criminal complaint given to the police for passing off, the respondent has made a trivial change to the

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name of his shop as “SHRI MAHALAKSHMI DRR VELLI MALIGAI” which

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according to the Learned Counsel for the applicant is more closer

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to the applicant's Trademark and Tradename.

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8. Per contra, the learned Counsel appearing for the

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respondent would submit that, the Tradename of the defendant is

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noway near the trademarks of the applicant. The applicant cannot

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claim exclusive right for the alphabets “D” and “R”. Since the

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applicant gave a police complaint and filed a Civil Suit to avoid

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litigation and to have peace, the respondent changed the tradename

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as “SHRI MAHALAKSHMI DRR VELLI MALIGAI.” Earlier suit before the

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District Judge, Villupuram was filed by the applicant, when the

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respondent was carrying on trade by name “DR Thanga MALIGAI”, even after changing the name of “SHRI MAHALAKSHMI DRR VELLI MALIGAI” at

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the instance of the rival traders, the applicant has filed the present suit at chennai with untenable contention.

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9. The Learned Counsel for the applicant referring

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Section 29(5) of the Trademarks Act would submit that, use of the https://hcservices.ecourts.gov.in/hcservices/

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registered trademark of the applicant in full or part is

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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prohibited and the word “ D.R” malafiedly employed by the respondent is per se infringement of the registered trademark of the applicant. For the said purpose, the Learned Counsel relies upon the B.K.Engineering Company case cited supra, drawing analogy with the observations made in the above case, the Learned Counsel would submit that the employment of the word D.R as Dhanraj name of the respondent's father or D.R.R the combination of respondent's father name Mr.Dhanraj and son's name Mr.Rahul is only to deceive the Court and the public. Putting the word D.R.R prominently in the sign board even after the interim order of the Court is to circumvent the interim order. The use of the name D.R.R in the sign board only magnifies the intention of the

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respondent to infringe the Trademark of the applicant and to make illegal gain through passing off.

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10. Referring the Gangotree Sweets and Snacks Pvt Case

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cited supra, the Learned Counsel for the applicant would submit that, in this case the Court has clearly held that, “ not the place

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of trade, but use of the Tradename/Trademark is essential and in an action for infringement, the plaintiff must, no doubt, make out

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that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and defendant's mark

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is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is a limitation, no

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further evidence is required to establish that the plaintiff's https://hcservices.ecourts.gov.in/hcservices/

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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rights are violated.”

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11. Referring Heinz Italia and another case cited supra,

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the Learned Counsel for the applicant would submit that, “ the fact of respondent time and again making small changes in the sign board is an attempt to continue to mislead the purchaser and to make it more difficult for the applicant to protect their mark.”

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12. Per contra, the Learned Counsel for the respondent

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would submit that, the respondent being a small time trader in the Silver articles at Villupuram, has nothing to do with the Trademark of the applicant. Only if the tradename used by the respondent is phonetically, visually, structurally similar with the applicant's trademarks, suit for infringement and passing of will lie. In this case, the trade name of the respondent do not fall under the trinity test.

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13. Referring Mankind Pharma Ltd case cited supra, the

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Learned Counsel for the respondent would submit that, in case of

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infringement of registered trademark by use as a tradename, the

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provision of Section 29(4) cannot be relied upon. What has been constituted under Section 29(5) is the use of the registered

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trademark as tradename or part of the tradename. The use of D.R.R

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is not part of the registered tradename of the applicant. Though

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the applicant has registered the trademarks of D.R.RAANKA BROS,

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D.R.R cannot taken as part of that trademark. The usage of https://hcservices.ecourts.gov.in/hcservices/ alphabets innocuously cannot be presumed to be infringement of the

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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trademark, unless and until, there are other factors which could indicate visually structurally or phonetically similar. In the absence of structurally, visually and phonetically similar, mere use of alphabets incidentally being part of the plaintiffs registered trademark, though the applicant and the respondents are in the same trade, will not amount to infringement or passing off.

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14. Relying upon Cadila Health Care case cited supra,

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the learned Counsel for the respondent would submit that, the

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broad test formulated in the said case, if applied, it will be easily seen that, there is neither infringement of trademark or passing off the respondent's product as that of the applicant's product.

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D.R/D.R.RAANKA BROS, whereas the respondent is using

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the alphabets D.R.R., with suffix and prefix. The sign board of the respondent reads as “SHRI MAHALAKSHMI DRR VELLIMALAGAI.”

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except the words DRR , the other names are in minuscule font is not correct. The fonts are almost in same size. In fact, the words

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DRR is caught in between the words “Shri Mahalakshmi” and

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“Vellimalagai. The words DR registered by the applicant either in https://hcservices.ecourts.gov.in/hcservices/ isolation or with the other words D.R.RAANKA BROS does not

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O.A.Nos.702 & 703 of 2019 in C.S.No.444 of 2019

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resembles the D.R.R ., used by the respondent. The label work, the

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word design are also dissimilar. Except both the applicant and respondent are engaged in Silver Trade, none of the following test

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enunciated in Cadila Health Care Ltd Vs. Vadila Pharamaceuticals, applies to the case in hand.

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marks are word marks or label marks or composite marks i.e. Both words and label works.

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(c). The nature of the goods in respect of which they are used as trade marks.

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(d). The similarity in the nature, character and performance of the goods of the rival trades.

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(e). The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

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(f). The made of purchasing the goods or placing orders for the goods.

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(g). Any other surrounding circumstances which my be relevant in the extent of dissimilarly between https://hcservices.ecourts.gov.in/hcservices/

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the competing marks.”

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17. In the said circumstances, this Court is of the view