The Madras High Court dismissed for want of continuous cause of action a suit seeking permanent injunctions and account of profits for infringement of the trade mark 'CHALLENGE' and copyright, noting that the defendant had ceased using the offending mark in 2006.
Suit dismissed under Rule 3(a) of Order 13(A) CPC with no 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.
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
(ORDINARY ORIGINAL CIVIL JURISDICTION)
TUESDAY, THE 29TH DAY OF JUNE 2021
THE HON'BLE MR. JUSTICE R.SUBRAMANIAN
C.S.No.540 of 1999
M/s.Sri Vani Soap Works Padutharkollai, T.R.Pattinam, Kariakal, Tamil Nadu.
...Plaintiff
Vs.
M/s.Crescent Chemicals, No.5, Ramasamy Koil West Street, Kumbakonam, Tamil Nadu. ...Defendant
Civil suit praying that this Hon'ble Court be pleased to pass a judgment and decree in favour of the plaintiff:-
a) granting a permanent injunction restraining the defendant by itself,
its men, servants, agents or anyone claiming through it, from in any manner infringing the plaintiff's trade mark 'CHALLENGE' or any other mark, label or device, which is identical with or similar or deceptively similar to or a colourable imitation of the plaintiff's trade mark 'CHALLENGE' either as a trade mark or trading style or in any of its manufacturing activities, price lists, name tags, calendars, name boards, sign boards, packing materials or
https://hcservices.ecourts.gov.in/hcservices/ complimentary items, advertisement in newspapers, magazines, televisions,
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hoardings, etc;
b) granting a permanent injunction restraining the defendant by itself, or through its men, servants, agents or anyone claiming through it from in any manner passing of its goods as and for those of the plaintiff's by using the offending trade mark 'CHALLENGE' or any other mark, label or device which is identical with or in any manner similar or deceptively similar to or a colourable imitation of the plaintiff's trade mark, either as a trade mark or trading style in all its manufacturing, marketing and advertising activities;
c) granting a permanent injunction restraining the defendant by itself, or through its men, servants, agents or anyone claiming through it from in any manner infringing the plaintiff's copyright in its trade mark 'CHALLENGE' or any other label or artistic work which is similar or deceptively similar to that of the plaintiff copyrighted label 'CHALLENGE'.
d)directing the defendant to render a true and proper account of the profits earned by the defendant through the manufacture and sale of its products by infringing the trade mark 'CHALLENGE' and the copyright in it and directing the defendant to pay to the plaintiff all such profits;
e)directing the defendant to surrender to the plaintiff the entire stock of unused offending labels, cartons, boxes and any other printed materials, blocks, advertisement with literatures and any other material containing the https://hcservices.ecourts.gov.in/hcservices/ consisting infringement of the trade mark 'CHALLENGE' and the copyright
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in it for destruction;
f) directing the defendant to pay to the plaintiff the costs of this suit;
This Civil suit coming on this day before this court for hearing and
the plaintiff and the defendant herein not appearing in person or by advocate and upon reading the pleadings filed herein, and this court having observed that the defendant has ceased to use the offending mark, the cause of action
for the suit for passing of does not survive.. it is ordered as follows:-
That the Suit in C.S.No. 540 of 1999, be and is hereby dismissed
uunder Rule 3(a) of Order 13(A) of the Code of Civil Procedure as amended by the Commercial Courts Act, 2015.
WITNESS THE HON'BLE MR. JUSTICE SANJIB BANERJEE, CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 29th DAY OF JUNE 2021.
Sd./-
ASSISTANT REGISTRAR (COMM.CASES) //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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SK-15.07.2021
C.S.No.540 of 1999
ORDER :- DATED:29.06.2021
THE HON'BLE MR. JUSTICE R.SUBRAMANIAN
FOR APPROVAL:16.07.2021
APPROVED ON: 19.07.2021
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 29.06.2021
CORAM:
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.No.540 of 1999
M/s.Sri Vani Soap Works Padutharkollai,
T.R.Pattinam, Kariakal, Tamil Nadu.
...Plaintiff
Vs.
M/s.Crescent Chemicals, No.5, Ramasamy Koil West Street, Kumbakonam, Tamil Nadu.
...Defendant
Prayer: Plaint filed under Order VII Rule 1 of C.P.C., r/w. Sections 105 and 106 of the Trade & Merchandise Marks Act, 1957 r/w. Sections 55 and 62 of the Copyrights Act r/w. Order IV Rule 1 of the Madras High Court Original Side Rules, 1956, praying as follows:-
a) granting a permanent injunction restraining the defendant by itself, its men, servants, agents or anyone claiming through it, from in any manner infringing the plaintiff's trade mark 'CHALLENGE' or any other mark, label or device, which is identical with or similar or deceptively similar to or a colourable imitation of the plaintiff's trade mark 'CHALLENGE' either as a trade mark or trading style or in any of its manufacturing activities, price lists, name tags, calendars, name boards, sign boards, packing materials or complimentary items, advertisement in newspapers, magazines, televisions, hoardings, etc;
b) granting a permanent injunction restraining the defendant by itself,
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or through its men, servants, agents or anyone claiming through it from in any manner passing of its goods as and for those of the plaintiff's by using the offending trade mark 'CHALLENGE' or any other work, label or device which is identical with or in any manner similar or deceptively similar to or a colourable imitation of the plaintiff's trade mark, either as a trade mark or trading style in all its manufacturing, marketing and advertising activities;
c) granting a permanent injunction restraining the defendant by itself, or through its men, servants, agents or anyone claiming through it from in any manner infringing the plaintiff's copyright in its trade mark 'CHALLENGE' or any other label or artistic work which is similar or deceptively similar to that of the plaintiff copyrighted label 'CHALLENGE'.
d)directing the defendant to render a true and proper account of the profits earned by the defendant through the manufacture and sale of its products by infringing the trade mark 'CHALLENGE' and the copyright in it and directing the defendant to pay to the plaintiff all such profits;
e)directing the defendant to surrender to the plaintiff the entire stock of unused offending labels, cartons, boxes and any other printed materials, blocks, advertisement with literatures and any other material containing the consisting infringement of the trade mark 'CHALLENGE' and the copyright in it for destruction;
f) directing the defendant to pay to the plaintiff the costs of this suit;
and pass such further or other orders as this Hon'ble Court may deem fit and proper in the circumstances of this case and thus render justice.
For Plaintiff : No Appearance For Defendants : No Appearance
J U D G M E N T
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Even today, there is no representation for the plaintiff. It is seen from
the order dated 09.08.2006 that the defendant has changed its wrapper and
on that ground the injunction granted was vacated.
2.In view of the fact that the defendant has ceased to use the offending mark, the cause of action for the suit for passing of does not survive.
3.Hence, this suit is dismissed under Rule 3(a) of Order 13(A) of the Code of Civil Procedure as amended by the Commercial Courts Act, 2015. No costs.
Sd./-(R.S.M.J.,) 29.06.2021
List of witness and documents filed on the side of the plaintiff:
Nil
List of witness and documents filed on the side of the defendant:
Nil
Sd./-(R.S.M.J.,) 29.06.2021
//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.
1 issue framed by the court
Whether the suit for infringement of trade mark and copyright survives when the defendant has ceased to use the offending mark.
4 provisions across 4 enactments
M/s. Sri Vani Soap Works Padutharkollai
M/s. Crescent Chemicals
R Subramanian
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
