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1st Choice Food Products Rep. By its Partner T. Sivakumar v/s M/s. N.A. Thangarajan


Company & Directors' Information:- B. P. FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15311MP1994PTC032994

Company & Directors' Information:- S P P FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15412DL2004PTC128666

Company & Directors' Information:- J S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15314OR1991PTC002964

Company & Directors' Information:- H R B FOOD PRODUCTS PVT LTD [Active] CIN = U15146WB1988PTC045281

Company & Directors' Information:- V D FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15400DL2012PTC231717

Company & Directors' Information:- INDIA CHOICE PRIVATE LIMITED [Active] CIN = U51900DL2013PTC253963

Company & Directors' Information:- P R FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U74899DL1989PTC030483

Company & Directors' Information:- S S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15310MH2003PTC142530

Company & Directors' Information:- B K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15312OR1996PTC004541

Company & Directors' Information:- O H P FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U52205DL1999PTC100269

Company & Directors' Information:- K V FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15122DL2007PTC162739

Company & Directors' Information:- K. C. FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15431JK1982PTC000554

Company & Directors' Information:- K I C FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15316DL1979PTC009757

Company & Directors' Information:- R B FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15313DL2010PTC202753

Company & Directors' Information:- R K B FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15490KL2013PTC033500

Company & Directors' Information:- S K G FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15419UP1991PTC013771

Company & Directors' Information:- B H FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15134DL1997PTC084273

Company & Directors' Information:- N S FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15412WB1992PTC055591

Company & Directors' Information:- H N FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15146UP1990PTC011540

Company & Directors' Information:- V K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15412UP1988PTC010023

Company & Directors' Information:- B M FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15419WB1993PTC060386

Company & Directors' Information:- I K FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15412WB1991PTC051852

Company & Directors' Information:- S S V FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15499AP1982PTC003547

Company & Directors' Information:- S Q P FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15100MH2003PTC139217

Company & Directors' Information:- F S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15311MH2000PTC126031

Company & Directors' Information:- Z K FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400MH2010PTC209818

Company & Directors' Information:- M B S FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U01112WB2003PTC096375

Company & Directors' Information:- N D FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15131DL2002PTC115754

Company & Directors' Information:- C K M FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U51909KL1998PTC012358

Company & Directors' Information:- G S C FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15316WB1985PTC038398

Company & Directors' Information:- A K G FOOD PRODUCTS PVT LTD [Under Liquidation] CIN = U15412WB1990PTC049789

Company & Directors' Information:- J M D FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15419DL1998PTC097578

Company & Directors' Information:- L K FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15200TG2016PTC103411

Company & Directors' Information:- FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15431JK1966PTC000304

Company & Directors' Information:- R R FOOD PRODUCTS PRIVATE LIMITED [Active] CIN = U15490PN2015PTC154753

Company & Directors' Information:- A N FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400TG2013PTC091969

Company & Directors' Information:- R V S K FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15490DL2012PTC245851

Company & Directors' Information:- N.A. CORPORATION PRIVATE LIMITED [Active] CIN = U45203GJ2013PTC077910

Company & Directors' Information:- K G Y FOOD PRODUCTS PRIVATE LIMITED [Strike Off] CIN = U15400KA1984PTC005909

Company & Directors' Information:- FOOD PRODUCTS (INDIA) PVT. LTD. [Strike Off] CIN = U15311HR1994PTC032356

Company & Directors' Information:- M K FOOD PRODUCTS PVT LTD [Strike Off] CIN = U15209DL1979PTC009924

    O.S.A. Nos. 51, 52 & 53 of 2013

    Decided On, 08 April 2013

    At, High Court of Judicature at Madras

    By, THE HONOURABLE MR. JUSTICE M. JAICHANDREN & THE HONOURABLE MR. JUSTICE M.M. SUNDRESH

    For the Appellant: D. Shivakumaran, for AK. Balaji, Advocates. For the Respondent: K. Rajasekaran, Advocate.



Judgment Text

(Prayers: O.S.A.No.51 of 2013: This Original Side Appeal under Order XXXVI Rule 9 of Original Side Rules read with Clause 15 of Letters Patent against the order of the learned single Judge of this Court dated 19.12.2012 in O.A.No.642 of 2012 in C.S.No.513 of 2012.

O.S.A.No.52 of 2013: This Original Side Appeal under Order XXXVI Rule 9 of Original Side Rules read with Clause 15 of Letters Patent against the order of the learned single Judge of this Court dated 19.12.2012 in O.A.No.643 of 2012 in C.S.No.513 of 2012.

O.S.A.No.53 of 2013: This Original Side Appeal under Order XXXVI Rule 9 of Original Side Rules read with Clause 15 of Letters Patent against the order of the learned single Judge of this Court dated 19.12.2012 in O.A.No.644 of 2012 in C.S.No.513 of 2012.)

Common Judgment:

M. Jaichandren, J.

1. Since the issues involved in all the Original Side Appeals are similar in nature, they have been taken up together and a common Judgment is being passed.

2. The Original Side Appeals have been filed against the common order and decree, dated 19.12.2012, passed by the learned single Judge of this Court, in O.A.Nos.642, 643 and 644 of 2012, in C.S.No.513 of 2012.

3. The civil suit, in C.S.No.513 of 2012, had been filed by the plaintiff firm, which is the respondent in the present appeals, praying for the reliefs, which are as follows:

"(i) A perpetual injunction restraining the defendant by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchises, successors in interest, licensees, assignees, representatives or any of them from, in any manner, infringing the plaintiff's registered trademark `Hanuman’ with device `Hanuman’ with the Sanjeevi Hill in his hands, in a flying pose, by use of the device Hanuman, with the sanjeevi hill in his hands, in a flying pose, with the Trademark, 'Chettinad' or any device or device or mark deceptively similar to that of the plaintiff’s registered trademark or by use of identical or deceptively similar trading style or in any other manner, whatsoever.

(ii) A perpetual injunction restraining the defendant by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchises, successors in interest, licensees, assignees, representatives or any of them from, in any manner, passing off or enabling passing off of the defendant's goods, under the device Hanuman, with the sanjeevi hill in his hands, in a flying pose, with Trademark, 'Chettinad' or any other deceptively similar device or Trade Mark as and for the goods of the plaintiff under the registered trademark "Hanuman".

(iii) A perpetual injunction restraining the defendant by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchisees, successors in interest, licensees, assignees, representatives or any of them from in any manner, infringing the plaintiff's copyright over the artistic work in the label 'Hanuman' by use of the device Hanuman with the sanjeevi hill in his hands, in a flying pose, in 'Chettinad' label or any device deceptively similar to that of the plaintiff's artistic work or by use of identical or deceptively similar trading style and/or artistic work in any other manner whatsoever.

(iv) The defendants be ordered to surrender to plaintiff for destruction all name boards, packing materials, visiting cards, letterheads, printer bills, cartons, sachets, edible oil cans, tins, packets and other goods bearing the trademark 'chettinad', with device Hanuman, with the sanjeevi hill in his hands, in a flying pose or any mark deceptively similar to that of the plaintiff's registered trade mark and artistic work 'Hanuman'.

(v) The defendant be ordered to produce an account of profits made by them by the unlawful use of the registered trade mark of the plaintiff and thereafter, to pass a final decree upon ascertaining the accounts, in favour of the plaintiff and against the defendant or to award punitive damages, as deemed fit by the Hon'ble Court.

(vi) For the costs of the suit"

4. The plaintiff in the suit, in C.S.No.513 of 2012, had also filed the applications, in O.A.Nos.642, 643 and 644 of 2012, seeking the reliefs, which are as follows:

O.A.No.642 of 2012:

"Grant an injunction restraining the respondent by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchises, successors and interest, licensees, assignees, representatives or any of them from in any manner infringing the applicant's registered trademark `Hanuman’ with device `Hanuman’ with the Sanjeevi Hill in his hands in flying posture by use of the device Hanuman with the sanjeevi hill in his hands in flying pose with Trademark, 'Chettinad' or any device or mark deceptively similar to that of the applicant's registered trademark or by use of identical or deceptively similar trading style or in any other manner whatsoever pending disposal of the above suit."

O.A.No.643 of 2012:

"Grant an injunction restraining the respondent by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchises, successors and interest, licensees, assignees, representatives or any of them from in any manner passing off or enabling passing off of the respondent's goods under the device Hanuman with the sanjeevi hill in his hands in flying posture with Trademark, 'Chettinad' or any other deceptively similar device or Trade Mark as and for the goods of the applicant under the registered trademark "Hanuman".

O.A.No.644 of 2012:

"Grant an injunction restraining the respondent by themselves or their men, partners, proprietors, stockists, dealers, servants, agents, franchisees, successors in interest, licensees, assignees, representatives or any of them from in any manner infringing the applicant's copyright over the artistic work in the label 'Hanuman' by use of the device Hanuman with the sanjeevi hill in his hands in flying posture in 'Chettinad' label or any device deceptively similar to that of the applicant's artistic work or by use of identical or deceptively similar trading style and/or artistic work in any other manner whatsoever."

5. The brief facts of the case are as follows:

5.1. The plaintiff in the suit, in C.S.No.513 of 2012, which is the respondent in the present appeals, had been dealing in the purchase and sale of groundnut kernel. It has been involved in the process of manufacturing and selling of groundnut oil, oil cake, palm oil, etc. The groundnut oil manufactured by the respondent herein was being sold under the trade mark 'Hanuman' groundnut oil. While so, A.Thangarajan, one of the partners of the firm, had started a business dealing in groundnut oil. He had inducted his brother to run the business in the partnership firm in the name and style of N.A.Thangaraja and Bros., on 6.2.1976. The partnership firm had adopted the trade mark 'Hanuman' with the picture of 'Hanuman' carrying the sanjeevi hills, in a flying pose.

5.2. The firm had filed a trademark application to register the trade mark, vide application No.426263, in respect of the groundnut oil. The edible oil had been included in clause 29 for registering the trade mark Hanuman, with the picture of Hanuman carrying sanjeevi hills, in a flying pose. The partnership firm had been reconstituted, on 15.3.2000. T.Sivakumar, son of A.Thanasekaran, had been inducted, as a partner in the partnership firm. On 1.4.2000, the partner, namely, A.Thanasekaran, had retired from the partnership firm. He had executed a release deed in favour of A.Thangarajan, and T.Sivakumar, by releasing the entire right over the trade mark 'Hanuman', brand and label, and had agreed to transfer the registered trade mark No.426263, in clause 29.

5.3. The partnership firm had continued to carry on the business with the remaining partners, as per the partnership deed, dated 1.4.2000. The partnership firm had been reconstituted, once again. T.Sunilkumar, son of A.Thangarajan, had been inducted as a partner in the partnership firm, as per the deed, dated 15.3.2001. Thereafter, T.Sivakumar, son of A.Thanasekaran, had retired from the partnership firm and had executed a release deed relinquishing his right over the the trademark 'Hanuman' brand and label, and had agreed to transfer the registered trade mark No.426263, in clause 29.

5.4. A.Thanasekaran and T.Sivakumar had filed an application, dated 29.9.2001, stating that they had relinquished their right over the registered trade mark No.426263, in clause 29, and had also stated that they had no objection to transfer the trademark in favour of the existing partners.

5.5. The plaintiff in the suit, in C.S.No.513 of 2012, which is the respondent in the present appeals, had stated that it had the exclusive right to use the 'Hanuman' brand. However, the appellant/defendant in the present appeals had started using the trademark with the deceptively similar device. Though the defendant in the suit had adopted the device of 'Hanuman' with sanjeevi hills in his hands, in a flying pose, it had used the word chettinad as a suffix. It was a clear attempt on the part of the defendant to capitalise on the hard-earned reputation of the plaintiff over the brand 'Hanuman'. In spite of the plaintiff having issued a cease and desist notice, dated 20.10.2009, the defendant continued to use the trademark in order to confuse the customers. Thus, the act of the defendant had constituted an infringement of the trademark registered in favour of the plaintiff. Further, the defendant had been passing off its goods as though they had been manufactured by the plaintiff. Further, there has been an infringement of the copy right of the plaintiff relating to the Hanuman brand label.

5.7. The selling of identical products like edible oil under the trademark Chettinad, with the deceptive device of 'Hanuman' with sanjeevi hills in his hands, in a flying pose, is not an accident, but a deliberate and malicious attempt aimed at tarnishing the reputation of the plaintiff. Further, the defendant had also taken an advantage of the goodwill of the plaintiff, which had been created over a period of four decades.

5.8. The infringement of the trademark and the copy right of the plaintiff, by the defendant, has resulted in serious loss and hardship to the plaintiff. The plaintiff would continue to suffer, if the defendant was allowed to continue with its unlawful activities, undeterred. No amount of pecuniary compensation at a later date would be enough to compensate the loss and agony suffered by the plaintiff.

6. In the counter affidavit filed on behalf of the defendant, it had been stated that this Court had no jurisdiction to try the case, as the defendant is outside the jurisdiction of this Court, and that no cause of action had arisen for the filing of the suit, within the jurisdiction of this Court.

7. The learned single Judge of this Court, in his order, dated 19.12.2013, made in O.A.Nos.642, 643 and 644 of 2012, in C.S.No.513 of 2012, had held that the trademark of the plaintiff had been registered, at Chennai. Therefore, the suit filed by the plaintiff, with regard to the infringement of the trademark, is maintainable before this Court. The learned single Judge had also rejected the claim of the defendant that the plaintiff had not shown a single sale of the defendant's products, in Chennai.

8. The learned single Judge had noted that one of the main defenses raised on behalf of the defendant/appellant is that 'Hanuman' is a mythological god worshipped by a large number of Hindus, throughout the globe. A lot of business people in India have adopted the word 'Hanuman' and the device of 'Hanuman', in various poses, as their trademarks. The portrait of 'Hanuman' carrying the sanjeevi hills in his hand, is found in several temples and religious books. The original author of the said artistic work is unknown.

9. It had been stated, on behalf of the defendant, that the device of 'Hanuman' has become 'public juris'. Therefore, nobody can claim exclusive right over it. The grant of the registration of the mark containing the picture of the 'Hanuman', or the word 'Hanuman', is contrary to the law relating to Trade Marks.

10. It had been further stated that the defendant is using the brand name 'Chettinad' and not 'Hanuman'. Thus, it is clear that the marks are different from one another. Therefore, the question of infringement would not arise, as there would be no likelihood of the customer being misled to buy the products of the respondent/plaintiff.

11. It had been further submitted on behalf of the appellant/defendant that there was no infringement of the trademark of the goods in question, as the plaintiff did not have an absolute ownership of the copyright over the 'Hanuman' brand label, nor did its essential artistic features vest with the plaintiff. However, it had been submitted on behalf of the plaintiff that the plaintiff and the defendant were in the same business, which was being carried on from the same place. At one stage, the partner of the defendant firm had been associated with the plaintiff. Further, a bare look at the label of the plaintiff and the defendant would show that the defendant had been marketing its goods under the brand name 'Chettinad'. However, he has been using the pictures of 'Hanuman', which is deceptively similar to that of the plaintiff's trademark. As such, it had mislead the customer to believe that the goods of the defendant are that of the plaintiff.

12. Taking into consideration the number of decisions relied on by the learned counsel appearing on behalf of the plaintiff, as well as the defendant, and in view of the submissions made on their behalf, the learned single Judge had noted that it was not in dispute that the trademark of the plaintiff had been registered, even though it was under challenge.

13. It had also been noted that the plaintiff had been carrying on the business in groundnut oil, with a registered trademark. The learned single Judge had also observed that it was not in dispute that both the plaintiff and the defendant had been carrying on the business dealing in the same products. However, the defendant had been marketing its products under the trade name 'Chettinad' by using the picture of the 'Hanuman', which is deceptively similar to that of the plaintiff. Visual analysis would show that the label used by the plaintiff and the defendant, and the picture of 'Hanuman' used by them are identical in nature.

14. As such, the label used by the defendant may lead the customer to believe that the products sold under the trademark 'Chettinad', was being manufactured and marketed by the plaintiff. In such view of the matter the learned judge had allowed the applications, in O.A.Nos.642, 643 and 644 of 2012, filed by the plaintiff. An order of ad-interim injunction had also been granted against the defendant, as prayed for by it, till the disposal of the suit.

15. Challenging the order passed by the learned single Judge, dated 19.12.2012, in O.A.Nos.642, 643 and 644 of 2012, in C.S.No.513 of 2012, the defendant in the said suit had filed the present Original Side Appeals before this Court.

16. The learned counsel appearing on behalf of the appellant in the present Original Side Appeals had submitted that the respondent had not furnished sufficient materials to establish the existence of a prima facie case before this Court. The learned single Judge ought to have considered the fact that in a case arising under the Trade Marks Act, 1999, when a plaintiff pleads an assignment of the trademark by the defendant, by way of relinquishment of the joint right in the said trademark, the burden is upon the plaintiff to prove the same, by way of sufficient materials, as per the provisions of Section 45 of the Trade Marks Act, 1999, read with Rule 68 of the Trade Mark Rules, 2002. The learned counsel appearing on behalf of the appellant in the present Original Side Appeals had further submitted that no such materials had been made available by the respondent, who was the plaintiff in the suit in C.S.No.513 of 2012. When the plaintiff in the suit, who is the respondent in the present appeals, claims that it is entitled, by assignment, to a Registered Trade Mark, it ought to have placed sufficient materials before this Court to substantiate its claim that it had applied the Trade Mark Registry to register its title.

17. The learned counsel appearing on behalf of the appellant in the present Original Side Appeals had further submitted that, when the respondent had made a claim with regard to the relinquishment of the trademark right, by the appellant, it should have placed all the relevant materials before the Registrar of trademark, in support of its claims. However, no such attempt had been made by the defendant to establish its right.

18. It had been further stated that the respondent, as the plaintiff in the suit, in C.S.No.513 of 2012, had not produced the relevant certificates, as per Section 137 of the Trade Marks Act, 1999, at the time of the filing of the suit.

19. It had been further submitted that the learned single Judge ought to have dismissed the suit filed by the defendant, as no cause of action had arisen within the jurisdiction of this Court, especially, when the respondent, as well as the appellant in the present appeals are carrying on the business, at Virudunagar, outside the territorial jurisdiction of this Court.

20. The learned counsel had further submitted that the learned single Judge had not granted sufficient time to the appellant to produce the relevant documents, before the Court, to substantiate its claim. In such circumstances, the order of the learned single Judge, dated 19.12.2012, made in O.A.Nos.642, 643 and 644 of 2012, in C.S.No.513 of 2012, is liable to be set aside and the matter may be remitted back to the learned single Judge of this Court for the purpose of considering all the relevant materials that may be furnished by the appellant, to disprove the case of the respondent.

21. The learned counsel appearing on behalf of the appellant had placed reliance on the decision of the Delhi High Court, in BHOLE BABA MILK FOOD INDSUTRIES LTD. Vs. PARUL FOOD SPECIALITIES (P) LTD., (2011 (45) PTC 217 (DEL.), wherein, it had been held that the mark 'Krishna' is descriptive of the Hindu God and his association with milk products. Therefore, the plaintiff's claim of monopoly over the mark 'Krishna' would not be correct.

22. The learned counsel had also relied on a decision of this Court, in MOHAMED ABOOBACKER CHANK Vs. V.SARASWATHI (CDJ 2013 MHC 881), wherein, it had been held that there was no phonetic, visual or structural similarity between the rival marks of 'Sankya' and 'Changu'. Similarly in the case in hand, there is no such similarity between the trade marks of the appellant, as well as of the defendant. Therefore, an order of ad-interim injunction granted in favour of the respondent is unsustainable in the eye of law. Accordingly, the Original Side Appeals filed by the appellant is liable to be allowed.

23. Per contra, the learned counsel appearing on behalf of the defendant had submitted that the registered trade mark of the respondent is 'Hanuman', in a flying pose, with the word 'Hanuman'. The appellant had been infringing the registered trademark of the respondent by using the

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trade mark 'Hanuman', in a flying pose, with the word 'Chettinad'. The trade mark used by the appellant is deceptively similar in nature to that of the respondent and therefore, it would mislead the customers, while purchasing the products manufactured by the appellant, as though they had been manufactured and marketed by the respondent. In such circumstances, in view of the materials available, the learned single Judge had rightly granted an order of ad- interim injunction restraining the appellant from using the trademark, which is similar in nature to that of the registered trade mark of the respondent. 24. In view of the submissions made by the learned counsels appearing on behalf of the appellant, as well as the respondent, and on a perusal of the records available, and on considering the decisions cited supra, we are of the considered view that the learned single Judge had rightly granted an order of ad-interim injunction restraining the appellant from infringing the trade mark of the respondent. 25. The learned single Judge had rightly come to the conclusion that the trademark used by the appellant, which is 'Hanuman', in a flying pose, carrying the sanjeevi hills in his hands, is deceptively similar to that of the registered trademark of the respondent. The learned single Judge of this Court is also right in holding that the trademark used by the appellant could deceive the purchasers of edible oil, as they would be misled into thinking that the goods sold by the appellant had been manufactured and marketed by the respondent. 26. It is also noted that the appellant firm had been constituted by certain individuals, who had left the respondent partnership firm. It is also noted that the groundnut oil manufactured and marketed by the appellant, as well as the respondent, are from the same area in the State of Tamil Nadu. As such, we do not find any reason to interfere with the order of the learned single Judge dated 19.12.2012, made in O.A.Nos.642, 643 and 644 of 2012, in C.S.No.513 of 2012. Accordingly, the present Original Side Appeals stand dismissed. No costs. Connected M.P.Nos.1, 1 and 1 of 2013 and M.P.Nos.1, 1 and 1 of 2013 are closed.
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