Allowed

Lotte India Corpn. Ltd. v. Shiv Sakthi Food Products

Madras HC18 Aug 2021CS/431/2012

Case brief

AI extract

What is this about?

The High Court of Madras, in an ex-parte suit and applications, decreed permanent injunctions restraining the defendant from infringing trademark and copyright, passed off goods, and ordered surrender of infringing materials. The court also directed an account of profits, awarded damages of Rs.1,00,000/-, and costs.

What did the court decide?

Permanent injunction against trademark infringement, copyright infringement, and passing off; surrender of infringing materials; account of profits; damages of Rs.1,00,000; costs.

Lotte India Corpn. Ltd. Vs Shiv Sakthi Food Products — 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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WEDNESDAY, THE 18TH DAY OF AUGUST 2021

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THE HON'BLE MR. JUSTICE R.SUBRAMANIAN

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C.S. No.431 of 2012 and O.A. No.523 of 2012 and A. No.1145 of 2020

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Lotte India Corporation Ltd., Second Floor, Murugesan Complex, 84, Greams Road, Thousand Lights, Chennai – 600 006. Rep. by its Company Secretary, Mr.T.G.Karthikeyan ... Plaintiff/Applicant (in both the applications)

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-Versus-

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Shiv Sakthi Food Products, Sainik Colony, Lashkar, Gwalior – 474 001. ... Defendant/Respondent (in both the applications)

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C.S. No.431 of 2012:-

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Civil Suit praying that this Hon'ble Court be pleased to grant a judgment and decree on the following terms:-

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a) a permanent injunction restraining the defendants by themselves, their partners, proprietor, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, https://hcservices.ecourts.gov.in/hcservices/ wholesalers, dealers, retailers, advertisers or any one claiming through or

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

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under them from infringing plaintiff's registered trademarks LOTTE

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COFFY BITE label / wrapper by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates, confectionery etc., or any other product bearing an almost identical trademark COFFEE TOFFEE and / or package, wrapper, container, carton, label with colour scheme, getup, layout which are almost identical / similar to the essential features of plaintiff's registered trade mark COFFY BITE label / wrapper;

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b) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or under them from committing acts of copyright infringement by making substantial reproduction of the plaintiff's copyright in the artistic work COFFY BITE Labels / wrappers and pouchs / packets by use of identical colour scheme of red, white and yellow with blue background for their COFFEE TOFFEE label / wrapper and pouch / packet or in any other manner whatsoever;

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c) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, https://hcservices.ecourts.gov.in/hcservices/ wholesalers, dealers, retailers, advertisers or any one claiming through or

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them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates confectionary etc., or any other product bearing an almost identical trademark COFFEE TOFFEE and / or package, wrapper, pouch, packet, container, carton, label with colour scheme, getup, layout which are identical / similar to plaintiff's trade dress & get up in COFFY BITE label / wrapper and pouch / packet;

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d) the defendants be ordered to surrender to the plaintiff for destruction, all containers, pouches, prints, dies, blocks, moulds and plates, screen prints, packing and advertising materials and any other material in their possession, bearing the mark COFFEE TOFFEE which are a substantial reproduction of the plaintiff's trade dress & get up and copyright in the artistic work COFFY BITE label / wrapper and pouch / packet amounts to infringement of plaintiff's registered trademark and copyright therein and amounts to passing off defendants' goods as and for plaintiff's goods;

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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 and artistic work COFFEE TOFFEE label / wrapper and pouch / packet and final decree be passed in favour of the plaintiff for the amount of profits https://hcservices.ecourts.gov.in/hcservices/ thus found to have been made by the Defendants, after the latter have

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rendered accounts;

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f) the defendants be ordered to pay to the plaintiff a sum of Rs.1,00,000/- as damages for their wrongful and illegal activities by use of an almost identical trademark COFFEE TOFFEE label and artistic work COFFEE TOFFEE label pouch / packet;

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g) for costs of the suit.

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O.A. No.523 of 2012:-

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Original Application praying that this Hon'ble Court be pleased to grant an ad-interim, interim, temporary injunction restraining the respondents, by themselves, their partners, proprietor, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them from committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates confectionary etc., or any other product bearing an almost identical/deceptively similar trademark COFFEE TOFFEE and / or package, wrapper, pouch, packet, container, carton, label with colour scheme, getup, layout which are identical / similar to plaintiff's trade dress & get up in COFFY BITE label / wrapper and pouch / packet or in any other https://hcservices.ecourts.gov.in/hcservices/ manner whatsoever, pending disposal of the suit.

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

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A. No.1145 of 2020:-

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Application praying that this Hon'ble Court be pleased to pass an order for substituted service to the respondent by effecting publication in a local newspaper having circulation at Gwalior and also affixing the summons at the Court Notice Board and the last known residence in the above suit.

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This civil suit along with these applications coming on this day before this court for hearing in the presence of Ms.Chandini Pradeepkumar for Mr.A.A.Mohan, advocates for the plaintiff in C.S. No.431 of 2012 and for the applicant in O.A. No.523 of 2012 and A. No.1145 of 2020 and the defendant/respondent herein not appearing in person or by advocate and the said defendant herein having been set ex-parte and upon reading the plaint filed herein and the order herein dated 03.12.2020 and the other exhibits therein referred to and upon perusing the evidence adduced therein, and it is ordered and decreed as follows:-

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That Shiv Sakthi Food Products, the defendant herein, by themselves, their partners, proprietor, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or under them be and is hereby restrained by an order of permanent injunction https://hcservices.ecourts.gov.in/hcservices/ from (a) infringing plaintiff's registered trademarks LOTTE COFFY BITE

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label / wrapper by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates, confectionery etc., or any other product bearing an almost identical trademark COFFEE TOFFEE and / or package, wrapper, container, carton, label with colour scheme, getup, layout which are almost identical / similar to the essential features of plaintiff's registered trade mark COFFY BITE label / wrapper; and (b) committing acts of passing off and enabling others to pass off by manufacturing, distributing, marketing, selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates confectionary etc., or any other product bearing an almost identical trademark COFFEE TOFFEE and / or package, wrapper, pouch, packet, container, carton, label with colour scheme, getup, layout which are identical / similar to plaintiff's trade dress & get up in COFFY BITE label / wrapper and pouch / packet;

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That Shiv Sakthi Food Products, the defendant herein, by themselves, their partners, proprietor, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or under them be and is hereby restrained by an order of permanent injunction from committing acts of copyright infringement by making substantial https://hcservices.ecourts.gov.in/hcservices/ reproduction of the plaintiff's copyright in the artistic work COFFY BITE

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

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Labels / wrappers and pouchs / packets by use of identical colour scheme of

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red, white and yellow with blue background for their COFFEE TOFFEE

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label / wrapper and pouch / packet or in any other manner whatsoever;

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That the defendant herein be and is hereby directed to surrender to the plaintiff for destruction, all containers, pouches, prints, dies, blocks, moulds and plates, screen prints, packing and advertising materials and any other material in their possession, bearing the mark COFFEE TOFFEE which are a substantial reproduction of the plaintiff's trade dress & get up and copyright in the artistic work COFFY BITE label / wrapper and pouch / packet amounts to infringement of plaintiff's registered trademark and copyright therein and amounts to passing off defendants' goods as and for plaintiff's goods;

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That the defendant herein be and is hereby directed to render account of profits made by use of trademark and artistic work COFFEE TOFFEE label / wrapper and pouch / packet and do pay 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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That the defendant herein do pay to the plaintiff a sum of Rs.1,00,000/- as damages for their wrongful and illegal activities by use of

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an almost identical trademark COFFEE TOFFEE label and artistic work https://hcservices.ecourts.gov.in/hcservices/ COFFEE TOFFEE label pouch / packet;

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That the defendant herein do pay to the plaintiff herein the costs of

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the suit as and when taxed by the taxing officer of this court and noted in

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the margin thereof.

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That these O.A. No.523 of 2012 and A. No.1145 of 2020 do stand closed.

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WITNESS THE HON'BLE MR. JUSTICE SANJIB BANERJEE, CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 18TH DAY OF AUGUST 2021.

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Sd./-

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ASSISTANT REGISTRAR (Comm. Cases)

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//Certified to be true copy// 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/

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KLY-01/10/2021

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C.S. No.431 of 2012 and

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O.A. No.523 of 2012 and

A. No.1145 of 2020

DECREE

DATED: 18.08.2021

THE HON'BLE MR. JUSTICE R.SUBRAMANIAN

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FOR APPROVAL:29.12.2021

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APPROVED ON:05.01.2022

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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 : 18.08.2021

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CORAM

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THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN

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C.S.No.431 of 2012 and

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A.No.1145 of 2020 & O.A.No.523 of 2012

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Lotte India Corporation Ltd., Second Floor, Murugesan Complex, 84, Greams Road, Thousand Lights, Chennai – 600 006. Rep. by its Company Secretary, T.G.Karthikeyan ...Plaintiff

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.Vs.

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Shiv Sakthi Food Products, Sainik Colony, Lashkar, Gwalior – 474 001. ... Defendant

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Plaint filed under Order IV Rule 1 of the Original Side Rules and

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Order VII Rule 1 of C.P.C., r/w. Sections 27, 28, 29, 134 & 135 of the Trade Marks Act, 1999 and Section 51, 54, 55 & 62 of the Copyright Act,

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1957, praying for a judgment and decree as follows:-

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a) a permanent injunction restraining the defendants by themselves, their partners, proprietor, legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers, advertisers or any one claiming through or

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under them from infringing plaintiff's registered trademarks LOTTE https://hcservices.ecourts.gov.in/hcservices/ COFFY BITE label / wrapper by manufacturing, distributing, marketing,

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selling, offering for sale, advertising or in any other manner dealing in toffees, chocolates, confectionery etc., or any other product bearing an almost identical trademark COFFEE TOFFEE and / or package, wrapper, container, carton, label with colour scheme, getup, layout which are almost identical / similar to the essential features of plaintiff's registered trade mark COFFY BITE label / wrapper;

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b) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or them from committing acts of copyright infringement by making substantial reproduction of the plaintiff's copyright in the artistic work COFFY BITE Labels / wrappers and pouchs / packets by use of identical colour scheme of red, white and yellow with blue background for their COFFEE TOFFEE label / wrapper and pouch / packet or in any other manner whatsoever;

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c) a permanent injunction restraining the defendants by themselves, their partners, proprietor, their legal representatives, successors in business, assigns, servants, agents, transporters, distributors, printers, stockists, wholesalers, dealers, retailers or any one claiming through or them from

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committing acts of passing off and enabling others to pass off by https://hcservices.ecourts.gov.in/hcservices/ manufacturing, distributing, marketing, selling, offering for sale, advertising

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

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or in any other manner dealing in toffees, chocolates confectionary etc., or

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any other product bearing an almost identical trademark COFFEE TOFFEE

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and / or package, wrapper, pouch, packet, container, carton, label, label with colour scheme, getup, layout which are identical / similar to plaintiff's trade dress & get up in COFFY BITE label / wrapper and pouch / packet;

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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 and artistic work COFFEE TOFFEE label / wrapper and pouch / packet and 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 defendants be ordered to pay to the plaintiff a sum of

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Rs.1,00,000/- as damages for their wrongful and illegal activities by use of an almost identical trademark COFFEE TOFFEE label and artistic work COFFEE TOFFEE label pouch / packet and

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g) for costs of the suit.

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For Plaintiff : Miss.Chandini Pradeepkumar for Mr.A.A.Mohan

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For Defendant : Set exparte

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J U D G M E N T

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The plaintiff which is a registered Proprietor of the Trademark

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'LOTTE COFFY BITE' seeks injunctive reliefs restraining the defendant from manufacturing, distributing, marketing, selling, offering for sale, advertising or in any manner dealing with toffees, chocolates, confectionery etc., bearing an almost identical trademark 'COFFEE TOFFEE', with a similar colour scheme for the wrappers, containers, labels and pouches, restraining the defendant, their representatives etc., from infringing the copyright of the plaintiff by making substantial production of the artistic work, label, pouches and packing materials of the plaintiff's products, restraining the defendant from passing off their product as the product of the plaintiff, a mandatory injunction directing the defendant to surrender for https://hcservices.ecourts.gov.in/hcservices/ destruction of containers, pouches, labels and other packing materials with

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the deceptively similar trademark 'COFFEE TOFFEE', a preliminary decree

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for accounts, damages and for costs.

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2. The defendant though served has not entered appearance to contest the claim.

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3. According to the plaintiff, the plaintiff which is the successor in interest of M/s.Parrys Confectionery Ltd., launched a coffee toffee and got the trade mark 'COFFY BITE' registered for the label with particular colour scheme. The registration were done in the year 2005. The defendant floated its products in the market with a name 'COFFEE TOFFEE'. The wrappers of the toffee of the defendant were in the same colour scheme and were also deceptively similar to the colour scheme and font of the letters adopted by the plaintiff. Claiming that the defendant is infringing its trademark as well as the copyright, the plaintiff had come to Court seeking aforesaid injunctive reliefs and damages.

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4. One Mr.T.G.Karthikeyan, Constituted Attorney and Company Secretary of the plaintiff has been examined as PW1. He has filed the proof affidavit and an additional proof affidavit substantially reproducing the claims made in the plaint. The certificates of the registration of the Trademark have been marked as Ex.P3 to Ex.P5, the legal use certificates have been marked as Ex.P12 to Ex.P14.

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

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5. A perusal of the above documents demonstrates that the plaintiff is

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the Proprietor of the Trademark 'COFFY BITE' written in a particular manner and printed with a particular colour scheme. The copies of the wrapper and packing material of the defendant has been produced as Ex.P9 and Ex.P11. A perusal of these documents would show that the manner in which the letters are written and the colour scheme of the wrappers and packing materials of the defendant are substantially similar to that of the plaintiff and are capable of causing confusion in the minds of the consumers, regarding the identity of the manufacturer. It is also seen that the deceptive similarity would definitely create a confusion in the minds of the consumer who is a person of average intelligence with imperfect recollection. There is a very strong likelihood of the goods of the defendant being passed off as the goods of the plaintiff, if the injunctive reliefs are not granted. In the light of the above conclusion, I am of the opinion that the plaintiff is entitled to a decree as prayed for in the suit.

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6. The suit is therefore decreed as prayed for. The plaintiff would be

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entitled to costs of the suit also. Consequently, the connected applications are closed.

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Sd./-R.S.M.J. 18/08/2021

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

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List of the witnesses examined on the side of the plaintiff :

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PW1 – Mr.T.G.Karthikeyan

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List of Exhibits marked on the side of the plaintiff :

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Sl. No.	Exhibits	Description of documents
1	Ex.P1	The copy of the power of attorney dated 03.08.2021(The original power of attorney was filed in Second Appeal No.57789/2020)
2	Ex.P2	The copy of the fresh certificate of incorporation consequent on change of name.(marked and compared with original)
3	Ex.P3	The copy of the trademark registration certificate under No.1364709 in Class 30 for the mark LOTTE COFFY BITE dated 15.06.2005.(marked and compared with original)
4	Ex.P4	The copy of the trademark registration certificate under No.1364710 in Class 30 for the mark LOTTE COFFY BITE dated 15.06.2005.(marked and compared with original)
5	Ex.P5	The copy of the trademark registration certificate under No.1364711 in Class 30 for the mark LOTTE COFFY BITE dated 15.06.2005 (marked and compared with original)
6	Ex.P6	The photocopies of Invoices of the plaintiff
7	Ex.P7	The photocopies of sales promotional materials of LOTTE COFFY BITE.
8	Ex.P8	The specimen of plaintiff's LOTTE COFFY BITE.
9	Ex.P9	The specimen of defendant's COFFEE TOFFEE.
10 urts.gov.in	Ex.P10 /hcservices/	The specimen of plaintiff's LOTTE COFFY BITE pouch / packet.

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Sl.
No.
11

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Sl. No.	Exhibits		Description of documents
11	Ex.P11	The specimen packet.	of defendant's COFFEE TOFEE pouch /
12	Ex.P12	The original registration ce for the mark L	legal use certificate for trademark rtificate under No.1364709 in Class 30 OTTE COFFY BITE.
13	Ex.P13	The original registration ce for the mark L	legal use certificate for trademark rtificate under NO.1364710 in Class 30 OTTE COFFY BITE.
14	Ex.P14	The original registration ce for the mark L	legal use certificate for trademark rtificate under NO.1364711 in Class 30 OTTE COFFY BITE.

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Sd./-R.S.M.J.

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18/08/2021

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//Certified to be true copy// Dated at Madras this the day of 2021.

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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/

Lotte India Corpn. Ltd. v. Shiv Sakthi Food Products

Case brief

What is this about?

What did the court decide?

Lotte India Corpn. Ltd. v. Shiv Sakthi Food Products

Case brief

What is this about?

What did the court decide?

What the court decided

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Issues for consideration

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