Allowed

Mrf Ltd. v. Sarna Auto Electric Works

Madras HC17 Aug 2021CS/135/2019

Case brief

AI extract

What is this about?

The Madras High Court held that the defendant infringed the plaintiff's registered 'MRF' trademarks and devices and wrongfully passed off its business. The court granted perpetual injunctions, ordered removal of infringing materials, and passed a preliminary decree for accounts of profits, but awarded only nominal damages due to lack of sufficient evidence for a specific sum.

What did the court decide?

Perpetual injunction against trademark infringement and passing off; direction to remove infringing materials and surrender goods; preliminary decree for rendering accounts of profits; nominal damages

Mrf Ltd. Vs Sarna Auto Electric Works — Intellectual Property | Madras HC (2021)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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(ORDINARY ORIGINAL CIVIL JURISDICTION)

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TUESDAY, THE 17TH DAY OF AUGUST 2021

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THE HON'BLE DR. JUSTICE G.JAYACHANDRAN

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C.S. No.135 of 2019 and O.A. Nos.148 to 150 of 2019 and A. Nos.1243, 3230 & 3231 of 2019

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M/s. MRF Limited, Having regd. Office at No. 114, Greams Road, Chennai 600006, rep. by its DGM- Marketing Development Mr. P. Charles Pravin Kumar

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... Plaintiff/Applicant (in all the applications)

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-Versus-

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M/s.Sarna Auto Electric Works, Shop No. 111, 114, Ring Road Market, Sarojini Nagar (Opp Naurauji Nagar) New Delhi – 23. ... Defendant/Respondent (in all the applications)

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C.S. No.135 of 2019:-

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Civil Suit praying that this Hon'ble Court be pleased to pass a

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judgment and decree for:-

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a. a perpetual injunction restraining the Defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person

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https://hcservices.ecourts.gov.in/hcservices/ claiming under/through them from in any manner infringing the Plaintiff's

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Registered Trade Marks 'MRF', 'MRF Connected Letter Device', the MRF

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Muscleman Device and/or MRF Dealer Board by using the said trademarks or any other mark, identical with and/ or deceptively similar to the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board in connection with the tyre dealership business of the Defendant or in any other manner whatsoever;

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b. a perpetual injunction restraining the Defendant, their distributors, stockist's, servants, agents, retailers, representatives or any other person claiming under/through them from in any manner using the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board and/or any other mark which is identical with or deceptively similar to the plaintiff's MRF Corporate Trademarks/Artistic Works and MRF Dealer Board so as to pass off the Defendant's business as that of a Dealer of the Plaintiff and wrongfully associate themselves with the plaintiff's business or in any other manner whatsoever;

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c. a perpetual injunction restraining the Defendant, his distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through him from in any manner infringing the Plaintiff's Copyright in the 'MRF CONNECTED LETTER DEVICE' filed as Plaint Document No. 1 or 'MRF MUSCLEMAN DEVICE' filed as Plaint Document No. 2 or the MRF Dealer Board filed as Plaint Document No.3, https://hcservices.ecourts.gov.in/hcservices/ by using the above mentioned Artistic Works or any substantial

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

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reproduction of the same on or in connection with the business of the Defendant, or in any other manner whatsoever;

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d. the Defendant be ordered to remove all painted displays, and other display material being used by the Defendant containing MRF Corporate Trademarks/Artistic Works and MRF Dealer Board or any other mark which is deceptively similar and/or is a substantial reproduction thereof and surrender to Plaintiff the glow sign board, all goods, labels, dyes, blocks, moulds, screen prints, packing materials, bills, vouchers, literature, publicity material, letterheads, invoices, challans, visiting cards, job card, delivery notes, rate list, sign boards, glow signs, blow ups and all reprographic materials and other materials bearing any of the trade marks or artistic works of the Plaintiff;

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e. a preliminary decree be passed in favour of the Plaintiff directing the Defendants to render account of profits made by use of trademark MRF and the MRF CONNECTED LETTER DEVICE' and 'MRF MUSCLEMAN DEVICE' and a final decree be passed in favour of the Plaintiff for the amount of profits thus found to have been made by the Defendants after the latter have rendered accounts;

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f. the Defendant be ordered and decreed to pay to the Plaintiff's a sum

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of Rs.25,01,000/- as special damages for acts of Passing Off and https://hcservices.ecourts.gov.in/hcservices/ infringement of Trade Mark & infringement of copyright committed by the

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

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Defendant;

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g. for costs of the suit.

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O.A. No.148 of 2019:-

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Original Application praying that this Hon'ble Court be pleased to grant an ad interim injunction restraining the respondent/defendant, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through them from in any manner infringing the Plaintiff's Registered Trade Marks 'MRF', 'MRF Connected Letter Device', the MRF Muscleman Device and/or MRF Dealer Board by using the said trademarks or any other mark, identical with and/ or deceptively similar to the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board in connection with the tyre dealership business of the Defendant or in any other manner whatsoever, pending disposal of the suit.

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O.A. No.149 of 2019:-

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Original Application praying that this Hon'ble Court be pleased to grant an ad interim injunction restraining the respondent/defendant, their distributors, stockist's, servants, agents, retailers, representatives or any other person claiming under/through them from in any manner using the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board and/or

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any other mark which is identical with or deceptively similar to the https://hcservices.ecourts.gov.in/hcservices/ plaintiff's MRF Corporate Trademarks/Artistic Works and MRF Dealer

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Board so as to pass off the Defendant's business as that of a Dealer of the

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Plaintiff and wrongfully associate themselves with the plaintiff's business or in any other manner whatsoever, pending disposal of the suit.

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O.A. No.150 of 2019:-

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Original Application praying that this Hon'ble Court be pleased to grant an ad interim injunction restraining the respondent/defendant, his distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through him from in any manner infringing the Plaintiff's Copyright in the 'MRF CONNECTED LETTER DEVICE' filed as Plaint Document No. 1 or 'MRF MUSCLEMAN DEVICE' filed as Plaint Document No. 2 or the MRF Dealer Board filed as Plaint Document No.3, by using the above mentioned Artistic Works or any substantial reproduction of the same on or in connection with the business of the respondent/defendant, or in any other manner whatsoever, pending disposal of the suit.

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A. No.1243 of 2019:-

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Application praying that this Hon'ble Court be pleased to appoint an Advocate Commissioner to visit and inspect the premises of the Respondents at Shop No.111, 114, Ring Road Market, Sarojini Nagar (Opp Naurauji Nagar), New Delhi 110 023, its godowns, warehouse, stock points, https://hcservices.ecourts.gov.in/hcservices/

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billing centres and such other premises in the direct or indirect control of

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the Respondents or its suppliers, along with local police protection to break

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open if necessary, seize and take into custody all spurious infringing goods using the trademark 'MRF', 'MRF Connected Letter Device', the MRF Muscleman Device and/or MRF Dealer Board and to take into custody any labels, dyes, blocks, pouches, boxes, books of accounts, invoices or other document containing information/entry regarding the Respondents use of the infringing mark/label/device/logo/artistic work.

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A. No.3230 of 2019:-

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Application praying that this Hon'ble Court be pleased to initiate appropriate action against the respondents herein in respect of their willful disobedience and /or breach of the injunction dated 14/02/2019 granted by this Hon'ble Court in O.A.No.148 to 150 of 2019 including detaining the respondents herein and all the persons incharge of the respondent's business in civil prison for such period as this Honble court. A. No.3231 of 2019:-

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Application praying that this Hon'ble Court be pleased to appoint an Advocate Commissioner to visit and inspect the premises of the Respondents at Shop No.111, 114, Ring Road Market, Sarojini Nagar (Opp. Naurauji Nagar), New Delhi 110 023, its godowns, warehouse, stock points,

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billing centers and such other premises in the direct or indirect control of https://hcservices.ecourts.gov.in/hcservices/ the Respondent's or its suppliers, along with protection of police of the

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concerned jurisdiction, to break open if necessary, seize and take into

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custody all spurious infringing goods using the trademark 'MRF', 'MRF connected Letter Device', the MRF Muscleman Device and/or MRF Dealer Board and to take into custody any labels, dyes, blocks, pouches, boxes, books of accounts, invoices or other document containing information/entry regarding the Respondent's use of the infringing mark/label/device/logo/ artistic work.

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This civil suit along with these applications coming on this day before this court for hearing in the presence of Mr.Madhan Babu, advocate for the plaintiff in C.S. No.135 of 2019 and for the applicant in all the applications and the defendant herein not appearing in person or by advocate and the said defendant herein having been set ex-parte and upon reading the plaint filed in C.S. No.135 of 2019 and the Judge's Summons and the affidavit of P.Charles Pravin Kumar filed in A. No.1243 of 2019 and the order dated 27.03.2019 made in O.A. Nos.148 to 150 of 2019 and the order dated 08.07.2019 made in A. Nos.3230 & 3231 of 2019 and the other exhibits therein referred to and upon perusing the evidence adduced therein, and this court having observed that that the plaintiff has proved that his registered trademark MRF letter as well as the device are infringed by the defendant

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

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and also deceptively passing off the products as if he is the Authorised

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Dealer of the plaintiff and as far as the prayer (f) is concerned, since there is no enough material evidence for this Court to ascertain special damages for the act of passing off and infringement of trademark and copyright committed by the defendant, it is ordered and decreed as follows:-

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That M/s.Sarna Auto Electric Works, the defendant herein, its distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through them be and is hereby restrained by an order of perpetual injunction from in any manner (a) infringing the Plaintiff's Registered Trade Marks 'MRF', 'MRF Connected Letter Device', the MRF Muscleman Device and/or MRF Dealer Board by using the said trademarks or any other mark, identical with and/ or deceptively similar to the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board in connection with the tyre dealership business of the Defendant or in any other manner whatsoever; (b) using the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board and/or any other mark which is identical with or deceptively similar to the plaintiff's MRF Corporate Trademarks/Artistic Works and MRF Dealer Board so as to pass off the Defendant's business as that of a Dealer of the Plaintiff and wrongfully

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associate themselves with the plaintiff's business or in any other manner https://hcservices.ecourts.gov.in/hcservices/ whatsoever; and (c) infringing the Plaintiff's Copyright in the 'MRF

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CONNECTED LETTER DEVICE' filed as Plaint Document No. 1 or 'MRF MUSCLEMAN DEVICE' filed as Plaint Document No. 2 or the MRF Dealer Board filed as Plaint Document No.3, by using the above mentioned Artistic Works or any substantial reproduction of the same on or in connection with the business of the Defendant, or in any other manner whatsoever.

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That the defendant herein be and is hereby directed to remove all painted displays, and other display material being used by the Defendant containing MRF Corporate Trademarks/Artistic Works and MRF Dealer Board or any other mark which is deceptively similar and/or is a substantial reproduction thereof and surrender to Plaintiff the glow sign board, all goods, labels, dyes, blocks, moulds, screen prints, packing materials, bills, vouchers, literature, publicity material, letterheads, invoices, challans, visiting cards, job card, delivery notes, rate list, sign boards, glow signs, blow ups and all reprographic materials and other materials bearing any of the trade marks or artistic works of the Plaintiff.

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That the defendant herein be and is hereby directed to render

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account of profits made by use of trademark MRF and the MRF CONNECTED LETTER DEVICE' and 'MRF MUSCLEMAN DEVICE' to

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

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the plaintiff herein.

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That the defendant herein do pay a nominal amount of Rs.1,000/-

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(Rupees one thousand only) as special damages to the plaintiff herein.

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That these O.A. Nos.148 to 150 of 2019 and A. Nos.1243, 3230 &

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3231 of 2019 do stand closed.

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That there shall be no costs of this suit.

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WITNESS THE HON'BLE MR. JUSTICE SANJIB BANERJEE,

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CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 17TH DAY OF AUGUST 2021.

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Sd/-

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ASSISTANT REGISTRAR (Comm. Cases) //Certified to be true copy//

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Dated at Madras this the day of 2022.

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COURT OFFICER(O.S.) From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.

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

KLY-18/09/2021

C.S. No.135 of 2019

and

O.A. Nos.148 to 150 of 2019 and

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A. Nos.1243, 3230 & 3231 of 2019

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DECREE

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DATED: 17.08.2021

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THE HON'BLE DR. JUSTICE G.JAYACHANDRAN

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FOR APPROVAL: 06.12.2021

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APPROVED ON: 07.12.2021

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

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED: 17.08.2021

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CORAM

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THE HONOURABLE DR. JUSTICE G.JAYACHANDRAN

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C.S. No.135 of 2019 and

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O.A.Nos.148, 149, 150 of 2019, A.Nos.1243, 3230, 3231 of 2019

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M/s. MRF Limited, Having regd. Office at No. 114, Greams Road, Chennai 600006, rep. by its DGM- Marketing Development Mr. P. Charles Pravin Kumar

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.... Plaintiff

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Versus

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M/s. Sarna Auto Electric Works Shop No. 111, 114, Ring Road Market, Sarojini Nagar (Opp Naurauji Nagar) New Delhi – 23

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... Defendant Prayer : Plaint under Order IV Rule 1 Original Side Rules, Sections 28,29,134 and 135 of the Trade Marks Act, 1999 and Sections 51,55 and 62 of the Copyright Act, 1957 and Section 7 of the Commercial Courts, Commercial Appellate Courts, Commercial Division and Commercial Appellate Division of the High Courts Act, No.4 of 2016, praying for the following:

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a. A perpetual injunction restraining the Defendant, its distributors,

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

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stockists, servants, agents, retailers, representatives or any other person

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claiming under/through them from in any manner infringing the Plaintiff's

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Registered Trade Marks 'MRF', 'MRF Connected Letter Device', the MRF Muscleman Device and/or MRF Dealer Board by using the said trademarks or any other mark, identical with and/ or deceptively similar to the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board in connection with the tyre dealership business of the Defendant or in any other manner whatsoever,

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b. A perpetual injunction restraining the Defendant, their distributors, stockist's servants, agents, retailers, representatives or any other person claiming under/through them from in any manner using the MRF Corporate Trademarks/Artistic Works and MRF Dealer Board and/or any other mark which is identical with or deceptively similar to the plaintiff's MRF Corporate Trademarks/Artistic Works and MRF Dealer Board so as to pass off the Defendant's business as that of a Dealer of the Plaintiff and wrongfully associate themselves with the plaintiff's business or in any other manner whatsoever,

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c. A perpetual injunction restraining the Defendant, his distributors, stockists, servants, agents, retailers, representatives or any other person claiming under/through him from in any manner infringing the Plaintiff's Copyright in the 'MRF CONNECTED LETTER DEVICE' filed as Plaint https://hcservices.ecourts.gov.in/hcservices/ Document No. 1 or 'MRF MUSCLEMAN DEVICE' filed as Plaint

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Document No. 2 or the MRF Dealer Board filed as Plaint Document No.3, by using the above mentioned Artistic Works or any substantial reproduction of the same on or in connection with the business of the Defendant, or in any other manner whatsoever.

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d. The Defendant be ordered to remove all painted displays, and other display material being used by the Defendant containing MRF Corporate Trademarks/Artistic Works and MRF Dealer Board or any other mark which is deceptively similar and/or is a substantial reproduction thereof and surrender to Plaintiff the glow sign board, all goods, labels, dyes, blocks, moulds, screen prints, packing materials, bills, vouchers, literature, publicity material, letterheads, invoices, challans, visiting cards, job card, delivery notes, rate list, sign boards, glow signs, blow ups and all reprographic materials and other materials bearing any of the trade marks or artistic works of the Plaintiff.

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e. A preliminary decree be passed in favour of the Plaintiff directing the Defendants to render account of profits made by use of trademark MRF and the MRF CONNECTED LETTER DEVICE' and 'MRF MUSCLEMAN DEVICE' and a final decree be passed in favour of the Plaintiff for the amount of profits thus found to have been made by the Defendants after the latter have rendered accounts;

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

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f. The Defendant be ordered and decreed to pay to the Plaintiff's a sum

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of Rs. 25,01,000/- as special damages for acts of Passing Off and

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infringement of Trade Mark & infringement of copyright committed by the Defendant.

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g. For costs of the suit;

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For Plaintiff : Mr.Madhan Babu

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For Defendant : Defendant set exparte.

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J U D G M E N T

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The suit is filed seeking a relief of perpetual injunction against the

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defendant from using the plaintiff's registered trademark MRF, MRF connected Letter Device, etc., alleging that the registered mark of the plaintiff is infringed by the defendant and pass off wrongfully with intention to exploit the reputation of the plaintiff's mark. The other incidental reliefs are also sought in this suit including preliminary decree, for rendition of

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accounts and sum of Rs.25,01,000/- for special damages.

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This Court at the time of admitting the suit, considered the primafacie case made out by the plaintiff in the interim injunction application and granted injunction on 14.02.2019. Thereafter, the plaintiff has filed application alleging that the defendant is still carrying on his trade

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https://hcservices.ecourts.gov.in/hcservices/ with the name board 'MRF' thereby committing breach of the interim order.

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3.After notice in the application to take action against the defendant

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for committing breach of the interim order, the defendant entered appearance through the counsel Mr.S.Selvendran and Mr.R.Raffi Basha. However, the defendant did not file any written statement leading to forfeiture of his right.

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4.On behalf of the plaintiff, the General Manager, P.W.1 has mounted the witness box and has filed proof affidavit in lieu of chief examination. 12 exhibits were relied and marked as Exs.P1 to Ex.P12.

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5.The specific case of the plaintiff is that it is Private Limited Company and the registered trademark holder of the word 'MRF' the Device “MRF Muscleman”. Whileso, identical mark been used by the defendant for his business. On coming to know about the infringement, the plaintiff has issued the cease and desist notice dated 05.02.2018. Since the infringement not abated, the present suit. Notice was received by the defendant. Ex.P2 and Ex.P3 proves the resgistration of the trademark word and design. Ex.P9 photograph proves the identical mark being used by the defendant. Ex.P7 and Ex.P8 are the cease and desist notice and postal acknowledgement.

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

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6.To prove the passing off, the plaintiff rely on the invoice issued by the defendant dated 07.12.2018, wherein the defendant claim himself as the Authorised Dealer of MRF which in fact is not correct. It is also evident from the other document filed by the plaintiff particularly, the previous order passed by this Court in C.S.Nos.137 of 2013 that the plaintiff is very vigilant in protecting his trademark and device and the legal use certificate Ex.P5 is relied to prove that the plaintiff continuous use of the word mark and device mark.

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7.In view of the above evidence, this Court finds that the plaintiff has proved that his registered trademark MRF letter as well as the device are infringed by the defendant and also deceptively passing off the products as if he is the Authorised Dealer of the plaintiff. Hence, the relief (a), (b), (c) and (d) sought in the plaint is allowed.

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Regarding the relief (e), a preliminary decree is passed in favour of the plaintiff.

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As far as the prayer (f) is concerned, since there is no enough

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material evidence for this Court to ascertain special damages for the act of https://hcservices.ecourts.gov.in/hcservices/ passing off and infringement of trademark and copyright committed by the

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defendant, a nominal amount of Rs.1,000/- (Rupees One Thousand only) as

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special damages is ordered. Accordingly, the suit is decreed. No costs.

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The connected applications are closed.

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Sd./-G.J.J.

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17/08/2021

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//Certified to be true copy//

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Dated at Madras this the day of 2022.

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COURT OFFICER(O.S.)

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From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.

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List of documents marked as exhibits on the side of the plaintiff:-

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1. Ex. P1 – Original Authorisation letter dated 29.07.2021.

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1. Ex. P2- MRF Connected Letter Device print Out.

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1. Ex. P3- MRF Muscleman Device Colour Print

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1. Ex. P4- MRF Dealer Board Colour Print out

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1. Ex. P5- Photocopies of Certificates of Legal use and registration of the

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Trade Marks together with the certificates of renewal of the marks of Plaintiff.

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1. Ex.P6- Original Chartered Accountant's certificate.

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1. Ex.P7- Office copy of the cease and desist notice issued by Plaintiff to

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defendant dated 05.02.2018.

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1. Ex.P8 - printout of the proof of the service of notice on the defendant

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downloaded from the internet site of the postal department dated

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

08.02.2018.

Ex.P9- Photograph of defendant's shop using Plaintiff's

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trademark/artistic works.

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10)Ex.P10- Original Invoice of the defendant dated 07.12.2018

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11)Ex.P11- Photocopy of order passed by the High Court of Madras in CS

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NO. 137 of 2013

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12)Ex.P12- photocopy of Power of Attorney dated 31.10.2018 .

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

Mrf Ltd. v. Sarna Auto Electric Works

Case brief

What is this about?

What did the court decide?

Mrf Ltd. v. Sarna Auto Electric Works

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

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Case details

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