The Court recorded that the parties had reached an agreement and dismissed the two civil suits relating to trademark and copyright infringement as withdrawn.
The suits in C.S.Nos.790 of 2004 and 504 of 2007 were dismissed as withdrawn with parties bearing their respective costs.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
(ORDINARY ORIGINAL CIVIL JURISDICTION)
TUESDAY, THE 22ND DAY OF JUNE, 2021
THE HON'BLE MR. JUSTICE R. SUBRAMANIAN
C.S. No.504 of 2007
New Hope Food Industries (P) Limited, Chinnasadayam palayam, Moolapalayam (P.O.), Erode - 638 002 rep. by its Managing Director Mr. A. Raja
..Plaintiff
Vs.
..Defendants
Civil Suit praying that this Hon'ble Court be pleased to grant a decree
and judgement on the following terms:
(a) a permanent injunction restraining the defendants by themselves, their directors, their associate companies, heirs, legal representatives, https://hcservices.ecourts.gov.in/hcservices/ successors in business, assigns, servants, agents, transporters, distributors,
printers, stockists, wholesalers, dealers, retailers or any one claiming
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through or under them from committing acts of infringement of plaintiff's registered trademark MILKA WONDER CAKE by use of trademark
MILKA or any other mark similar thereto in respect of cakes.
(b) a permanent injunction restraining the defendants by themselves, their directors, heirs, 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 infringement of copyright of plaintiff's artistic work in the capsule shaped device and the trademark MILKA depicted thereon by use of an almost and the trademark MILKA depicted thereon amounting to substantial reproduction of the plaintiff's copyright or in any manner whatsoever.
(c) a permanent injunction restraining the defendants by themselves, their directors, heirs, 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 manufacturing, distributing, marketing, selling, offering for sale, advertising or in any manner dealing in cakes, chat items, snacks or items other than breads by using the name MILKA which is identical to the Plaintiff's mark MILKA either as a trademark or trade name or trading style https://hcservices.ecourts.gov.in/hcservices/ amounting to passing off their products as and for the Plaintiff's products or
3
in any other manner whatsoever.
(d) the defendants be ordered to deliver up for destruction all the wrappers, pouches, cartons, labels, packaging, packing materials, advertisement materials, seals, dies, blocks, screen prints, pamphlets, name boards, brochures, trade literatures and such other materials bearing the trademark MILKA which is identical to the plaintiff's trademark MILKA.
(e) The defendants be ordered to pay a sum of Rs.10,05,000/- being compensatory and punitive damages for committing acts of infringement of Copyright and passing off in various manner as narrated in the plaint.
(f) A preliminary decree be passed in favour of the Plaintiff to render
true and faithful accounts of profits earned by the defendants by sale of cakes and food items other than breads using the trademark MILKA 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.
(g) For costs of the suit.
This Civil Suit along with C.S. No. 790 of 2004 coming on this day before this court for hearing in the presence of Mr. Rahul M. Shankar for Mr. A. A. Mohan, Advocates for the plaintiff herein and Mr. Amith Bhargav https://hcservices.ecourts.gov.in/hcservices/ for Mr. Harishankar Mani, advocates for the 1st defendant herein and Mr.
4
V. Senthil Kumar, advocate for the 2nd defendant herein and upon reading
the plaint and memo dated 30/04/2021 filed herein and the learned counsel
for the plaintiff has filed a memo stating that the parties have reached an agreement and seeking leave to withdraw the suit and, it is ordered as follows:
That the suit in C.S. No. 504 of 2007 be and is hereby dismissed as withdrawn.
WITNESS THE HON'BLE JUSTICE MR. SANJIB BANERJEE, THE CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 22ND DAY OF JUNE, 2021.
Sd./-
ASSISTANT REGISTRAR (COMM. CASE)
//Certified to be true copy// Dated at Madras this the day of 2021.
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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VF- 20.07.2021
C.S. No.504 of 2007
ORDER :-
DATED: 22.06.2021
THE HON'BLE MR. JUSTICE
R. SUBRAMANIAN
FOR APPROVAL: 20/07/2021
APPROVED ON: 22/07/2021
6
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 22.06.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.Nos.790 of 2004 and 504 of 2007
C.S.No.790 of 2004:
M/s.Pioneer Bakeries Private Limited Represented by its Managing Director Mr.K.Jayakrishnan, having its Registered Office at 89, Chettipalayam Cross, Poondurai Road, Moolapalayam Post, Erode – 638 002.
...Plaintiff
.Vs.
M/s.New Hope Food Industries Private Limited Represented by its Managing Director and Having its Registered Office at Chinna Sadayampalayam, Moolapalayam Post Erode – 638 002 ... Defendant
Plaint filed under Order IV Rule 1 of the Original Side Rules read with Order VII Rule 1 of the Code of Civil Procedure read with Sections 29 and 134 of Trade Marks Act, 1999 along with Sections 55 and 62 of the Copyright Act, 1957 praying for:
a) A permanent injunction restraining the defendant by themselves, their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them or any other person from and in any https://hcservices.ecourts.gov.in/hcservices/ manner infringing the plaintiff's registered Trade Mark “MILKA” by use of
7
Trade Mark “MILKA WONDER CAKE” or any other similar mark to the plaintiff's Registered Mark “MILKA”
b) A permanent injunction restraining the defendant by themselves, their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them and in any manner infringing the plaintiff's Copyright in the artistic work “MILKA” by using the Copyright in the artistic work “MILKA” or any other similar mark to the plaintiff's Copyright in the artistic work “MILKA”
c) A permanent injunction restraining the defendant by themselves, their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them from passing off the defendant's goods as and for the plaintiff's goods by sue of Trade Mark and the artistic work titled “MILKA WONDER CAKE” or any mark or artistic work similar to the plaintiff's registered Trade Mark and Copyright in the artistic work “MILKA” or in any other manner whatsoever;
d) direct the defendant to hand over to the plaintiff for destruction all cartons, labels, packing materials, dies, blocks, pamphlets, brochures, etc., bearing the trade Mark “MILKA WONDER CAKE”or any mark similar to the plaintiff's registered Trade Mar “MILKA”
e) A preliminary decree be passed in favour of the plaintiff directing the defendant to render an account of profits made by use of the
Trade Mark “MILKA WONDER CAKE” or any mark similar to the https://hcservices.ecourts.gov.in/hcservices/ plaintiff's registered Trade Mark “MILKA” and a final decree be passed in
favour of the plaintiff for the amounts of profits thus found to have been
8
made by the defendant after the latter has rendered accounts;
f) The defendant be ordered and decreed to pay the plaintiff a sum of Rs.10,00,000/- as damages for acts of passing off and infringement of copyright committed by the defendant.
g) For the costs of the suit.
For Plaintiff : Mr.Amith Bhargav for Mr.Harishankar Mani For Defendants : Mr.Rahul M.Shankar for Mr.A.A.Mohan
C.S.No.504 of 2007:
New Hope Food Industries (P) Limited, Chinnasadayampalayam, Moolapalayam (P.O.), Erode – 638 002 rep. by its Managing Director Mr.A.Raja
...Plaintiff
.Vs.
1.Pioneer Bakeries (P) Ltd., 52, Chettipalayam Cross, Poondurai Road, Erode – 638 002.
2.K.Jayakrishnan ... Defendants
Plaint filed under Order IV Rule 1 of the Original Side Rules read with Order VII Rule 1 of the Code of Civil Procedure read with Sections 29 and 134 and 135 of Trade Marks Act, 1999 and Sections 51, 55 and 62 of https://hcservices.ecourts.gov.in/hcservices/ the Copyright Act, 1957 praying for:
a) A permanent injunction restraining the defendant by themselves,
9
their Directors, their associate companies, heirs, 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 infringement of plaintiff's registered trademark MILKA WONDER CAKE by sue of trademark MILKA or any other mark similar thereto in respect of cakes.
b) A permanent injunction restraining the defendant by themselves, their Directors, heirs, 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 infringement of copyright of plaintiff's artistic work in the capsule shaped device and the trademark MILKA depicted thereon by use of an almost identical and nearly similar capsule shaped device and the trademark MILKA depicted thereon amounting to substantial reproduction of the plaintiff's copyright or in any manner whatsoever;
c) A permanent injunction restraining the defendant by themselves, their Directors, heirs, 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 manufacturing, distributing, marketing, selling, offering for sale, advertising or in any manner dealing in cakes, chat items, snacks or items other than breads by using the name MILKA which is identical to the plaintiff's mark MILKA either as a trademark or trade name or trading style amounting to passing off their products as and for the plaintiff's products or https://hcservices.ecourts.gov.in/hcservices/ in any other manner whatsoever;
10
d) the defendants be ordered to deliver up for destruction all the wrappers, pouches, cartons, labels, packaging, packing materials, advertisement materials, seals, dies, blocks, screen prints, pamphlets, name boards, brochures, trade literatures and such other materials bearing the trademark MILKA which is identical to the plaintiff's trademark MILKA;
e) the defendants be ordered to pay a sum of Rs.10,05,000/- being compensatory and punitive damages for committing acts of infringement of Copyright and passing off in various manner as narrated in the plaint;
f) A preliminary decree be passed in favour of the plaintiff to render true and faithful accounts of profits earned by the defendants by sale of cakes and food items other than breads using the trademark MILKA 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 and
g) For costs of the suit.
For Plaintiff : Mr.Rahul M.Shankar for Mr.A.A.Mohan
For Defendants : Mr.Amith Bhargav for Mr.Harishankar Mani for D1 Mr.V.Senthil Kumar for D2
J U D G M E N T
https://hcservices.ecourts.gov.in/hcservices/ The plaintiff has come up with the suit in C.S.No.790 of 2004 seeking
a) A permanent injunction restraining the defendant by themselves,
11
their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them or any other person from and in any manner infringing the plaintiff's registered Trade Mark “MILKA” by use of Trade Mark “MILKA WONDER CAKE” or any other similar mark to the plaintiff's Registered Mark “MILKA”
b) A permanent injunction restraining the defendant by themselves, their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them and in any manner infringing the plaintiff's Copyright in the artistic work “MILKA” by using the Copyright in the artistic work “MILKA” or any other similar mark to the plaintiff's Copyright in the artistic work “MILKA”
c) A permanent injunction restraining the defendant by themselves, their Directors, servants, agents, distributors, stockists, agents, representatives, assigns or any of them from passing off the defendant's goods as and for the plaintiff's goods by sue of Trade Mark and the artistic work titled “MILKA WONDER CAKE” or any mark or artistic work similar to the plaintiff's registered Trade Mark and Copyright in the artistic work “MILKA” or in any other manner whatsoever;
d) direct the defendant to hand over to the plaintiff for destruction all cartons, labels, packing materials, dies, blocks, pamphlets, brochures, etc., bearing the trade Mark “MILKA WONDER CAKE”or any mark similar to the plaintiff's registered Trade Mar “MILKA”
https://hcservices.ecourts.gov.in/hcservices/ e) A preliminary decree be passed in favour of the plaintiff directing
the defendant to render an account of profits made by use of the
12
Trade Mark “MILKA WONDER CAKE” or any mark similar to the plaintiff's registered Trade Mark “MILKA” and a final decree be passed in favour of the plaintiff for the amounts of profits thus found to have been made by the defendant after the latter has rendered accounts;
f) The defendant be ordered and decreed to pay the plaintiff a sum of Rs.10,00,000/- as damages for acts of passing off and infringement of copyright committed by the defendant.
g) For the costs of the suit.
and the plaintiff in C.S.No.504 of 2007 has come up with the suit
seeking
a) A permanent injunction restraining the defendant by themselves, their Directors, their associate companies, heirs, 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 infringement of plaintiff's registered trademark MILKA WONDER CAKE by sue of trademark MILKA or any other mark similar thereto in respect of cakes.
b) A permanent injunction restraining the defendant by themselves, their Directors, heirs, 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 infringement of copyright of plaintiff's artistic work in https://hcservices.ecourts.gov.in/hcservices/ the capsule shaped device and the trademark MILKA depicted thereon by use of an almost identical and nearly similar capsule shaped device and the
13
trademark MILKA depicted thereon amounting to substantial reproduction of the plaintiff's copyright or in any manner whatsoever;
c) A permanent injunction restraining the defendant by themselves, their Directors, heirs, 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 manufacturing, distributing, marketing, selling, offering for sale, advertising or in any manner dealing in cakes, chat items, snacks or items other than breads by using the name MILKA which is identical to the plaintiff's mark MILKA either as a trademark or trade name or trading style amounting to passing off their products as and for the plaintiff's products or in any other manner whatsoever;
d) the defendants be ordered to deliver up for destruction all the wrappers, pouches, cartons, labels, packaging, packing materials, advertisement materials, seals, dies, blocks, screen prints, pamphlets, name boards, brochures, trade literatures and such other materials bearing the trademark MILKA which is identical to the plaintiff's trademark MILKA;
e) the defendants be ordered to pay a sum of Rs.10,05,000/- being compensatory and punitive damages for committing acts of infringement of Copyright and passing off in various manner as narrated in the plaint;
f) A preliminary decree be passed in favour of the plaintiff to render true and faithful accounts of profits earned by the defendants by sale of https://hcservices.ecourts.gov.in/hcservices/ cakes and food items other than breads using the trademark MILKA and a final decree be passed in favour of the plaintiff for the amount of profits
14
thus found to have been made by the defendants after the latter have rendered accounts and
g) For costs of the suit.
2. The learned counsel for the plaintiff in C.S.No.504 of 2007 has filed a memo stating that the parties have reached an agreement and seeking leave to withdraw the suit.
3. The said memo is taken on file and the suits in C.S.Nos.790 of 2004 and 504 of 2007 are dismissed as withdrawn. No costs.
Sd./- R.S.M.J., 22.06.2021
List of the witnesses examined on the side of the plaintiff :
PW1 - A.Raja
List of Exhibits marked on the side of the plaintiff :
| Sl. No. |
Exhibits | Description | Dated |
|---|---|---|---|
| 1 | Ex.P1 | True copy of the resolution passed at the board meeting authorising PW1 to give evidence |
17.04.2004 |
| 2 | Ex.P2 | Memorandum and Articles of Association of the plaintiff. |
- |
| 3 | Ex.P3 | Notarized copy of the registration certificate issued by Superintendent of Central Excise, Erode-I Range, Erode. |
--.8.1997 |
| 4 | Ex.P4 | Notarized copy of the registration certificate under Tamil Nadu General Sales Tax Act |
08.10.1996 |
| 5 urts.gov.i |
Ex.P5 n/hcservices/ |
Certificate issued bythe Trademark Registry | 31.12.2007 |
15
| Sl. No. |
Exhibits | Description | Dated |
|---|---|---|---|
| 6 | Ex.P6 | Certificate issued bythe Trademark Registry | 31.12.2007 |
| 7 | Ex.P7 | Certified copy of the extract from the Registrar of copyrights |
30.12.1997 |
| 8 | Ex.P8 | Arch of Excellence Award, 1997 | -- |
| 9 | Ex.P9 | Certificate issued by the chartered Accountant |
11.04.2008 |
| 10 | Ex.P10 | Notarized copy of certificate issued by the Chartered Accountant |
11.04.2008 |
| 11 | Ex.P11 series |
Notarized copy of the application filed by the proprietor of the plaintiff |
-- |
| 12 | Ex.P12 | Certified copy of the plaint in C.S.No.891 of 1998 filed bythe 1stdefendant |
-- |
| 13 | Ex.P13 | Xerox copy of the plaint in C.S.No.896 of 1998 |
-- |
| 14 | Ex.P14 | Certified copy of the order in C.S.Nos.891 and 896 of 1998 |
17.08.1999 |
| 15 | Ex.P15 | Memorandum of understanding entered into between all the group promotors |
19.06.2003 |
| 16 | Ex.P16 | Xerox Copy of the order passed by the Company Law Board, Additional Principal Bench, Chennai in CP.No.52 of 2003 |
07.03.2007 |
| 17 | Ex.P17 series |
Xerox copies of the advertisement bills issued bythe advertisement agencies |
-- |
| 18 | Ex.P18 series |
Xerox copies of the invoices issued by the plaintiff for sale of our products. |
|
| 19 | Ex.P19 | Xerox copy of the order passed by the Intellectual Property Appellate Board, Chennai |
12.07.2004 |
| 20 | Ex.P20 | Xerox copy of the settlement agreement | 13.07.2006 |
| 21 |
Ex.P21 series |
Cash bills for purchase of products of defendants |
-- |
| 22 urts.gov. |
Ex.P22 n/hcservices/ |
Label for theproduct Milka Wonder Cake | -- |
16
Sl.
No.
| Sl. | Exhibits | Description | Dated |
|---|---|---|---|
| No. | |||
| for different flavors | |||
| 23 | Ex.P23 series |
Label for the product of the 1stdefendant for different flavors |
-- |
| 24 | Ex.P24 | Notarized copy of the sale deed of unregistered trade marks and copyrights |
30.11.2000 |
| 25 | Ex.P25 | Affidavit of V.M.Joseph filed in C.S.No.504 of 2007 |
27.04.2007 |
| 26 | Ex.P26 | Affidavit of A.Arumugam, one of the Directors of the 1stdefendant filed in C.S.No.504 of 2007 |
27.04.2007 |
| 27 | Ex.P27 | Notarized copy of the order in M.P.Nos.27 and 28 of 2009 and ORA Nos.205 and 206 of 2007 |
09.04.2009 |
| 28 | Ex.P28 | Notarized copy of the order in F.No.1- 12/2004-CRB(SZ) before the Copy Right Board, New Delhi |
29.04.2010 |
| 29 | Ex.P29 | Notarized copy of the order in CMA.Nos.903 to 905 of 2007 |
20.07.2010 |
List of the witnesses examined on the side of the defendants: Nil List of the witnesses examined on the side of the defendants: Nil List of Exhibits marked on the side of the defendants: Nil
Sd./- R.S.M.J., 22.06.2021
// Certified to be true copy// Dated at Madras this day of 2021.
Court Officer(O.S.)
From 25th day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.
2 provisions across 2 enactments
New Hope Food Industries (P) Limited
Pionner Bakeries (P) Ltd.
Mr. K. Jayakrishnan
R. Subramanian
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
