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A.D. Padmasingh Issac Proprietor Aachi Spices and Foods, Chennai & Another v/s Aachi Call Drivers & Travels

    Civil Suit (Comm.Div.) No.186 of 2020

    Decided On, 29 November 2021

    At, High Court of Judicature at Madras

    By, THE HONOURABLE MR. JUSTICE N. ANAND VENKATESH

    For the Plaintiffs: Gladys Ganiel, Advocate. For the Defendant: Set exparte.



Judgment Text

(Prayer: Civil Suit has been filed under Order IV, Rule 1 of the Original Side Rules and Order VII, Rule 1 of the C.P.C. Read with Sections 27(2), 29, 134 and 135 of the Trade Marks Act, 1999, praying to pass a judgment and decree for:-

(a) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from, advertising, offering for sale, running taxi services and running the website using same or similar or identical Trade Mark AACHI CALL DRIVERS & TRAVELS or any other similar Trade mark or in any media and use the same in invoices, website, letter heads and visiting cards, or any other goods or services by using any other Trade mark which is in any way visually or phonetically similar to the 1stPlaintiff's Trademark AACHIand use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trade mark which is in any way visually, or phonetically similar to the Plaintiffs' registered Trade mark No.838786, 1479159, 3371007 & 3370968 or in any manner infringe the 1stPlaintiff's registered Trade mark.

(b) granting a permanent injunction, restraining the defendant, by itself, its servants, agents, distributors, or anyone claiming through him from advertising, offering for sale, running taxi services and running the website using deceptively and phonetically similar Trade Mark AACHI/AACHI CALL DRIVERS & TRAVELS or any other similar Trade mark or in any media and use the same in invoices, website, letter heads and visiting cards, or any other goods o services by using any other trade mark which is in any way visually or deceptively or phonetically similar to the Plaintiffs' Trade mark AACHIor use the mark in invoices, letters heads and visiting cards or any other trade literature or by using any other Trade mark which is in any way visually, or phonetically similar to the Plaintiffs' Trade mark AACHIof in any manner pass off the Plaintiffs' services.

(c) directing the defendant to surrender to the plaintiffs all the packing material, cartons, advertisement materials and hoardings, letter-heads, visiting cards, office stationery and all other materials containing/bearing the name AACHI/AACHI CALL DRIVERS & TRAVELSor other deceptively or phonetically similar trade mark used in the pouches and packets.

(d) directing the defendant to render an account of profits made by them by the use of the impugned Trademark AACHI CALL DRIVERS & TRAVELSand decree the suit for the profits found to have been made by the Defendant, after the defendant has rendered accounts.

(e) directing the defendant to pay to the plaintiffs the costs to the suit, and

(f) pass such further order or order, as may be deemed fit and proper in the circumstances of the case and thus render justice.)

The instant suit has been filed seeking for the relief of permanent injunction, restraining the defendant, its servants, agents or anyone claiming through the defendant, from, advertising, offering for sale, running taxi services and running the website using same or similar or identical trade mark AACHI CALL DRIVERS & TRAVELS/ “IMAGE” or any other similar trade mark or in any media and use the same in invoices, websites, letter heads and visiting cards, or any other goods or services by using any other trade mark which is in any way visually or phonetically similar or any other mark identical or deceptively similar to the plaintiffs’ registered trade mark AACHI /

2. The case of the plaintiffs is with respect to the infringement of their registered trademark AACHI / “IMAGE” and passing off the label marks. The trade mark AACHIwas assigned in favour of the 1st plaintiff by one registered proprietary concern called the Aachi Masala Foods (P) Ltd., on 30.03.2007. The plaintiffs state that in the year 1999, the trade mark AACHI was first applied for and registered in the name of the 1st plaintiff trading, as Naveen products. The plaintiffs also state that there are currently 178 registrations of the trade mark AACHI in various words, labels and stylized marks and the 1st plaintiff also acquired international registration (WIPO) under the Madrid protocol for the trade mark AACHIword and device under Classes 30 and 39 in 107 and 117 designated countries respectively. It is claimed by the plaintiffs that the label marks as a whole have been in use since 1995 and that they have become widely famous among the trading community and the public. It is further claimed by the plaintiffs that they have been using these marks AACHIwith respect to almost all the masala preparations from the commencement of their business. The plaintiffs state that from the year 2016, they introduced new label marks across their product segments and all their marks got registered in class 30, being unopposed.

3. The grievance of the plaintiffs is that in March 2020, they came across the defendant's travel agency bearing the mark AACHI CALL DRIVERS & TRAVELS/ “IMAGE”. The defendant’s name consists of the word AACHI incorporated in its trade mark as AACHI CALL DRIVERS & TRAVELS. It is stated by the plaintiffs that they are concerned about the label adopted by the defendant which is visually and phonetically similar to the plaintiffs' trade mark and that the defendant mark is a conscious copy of the plaintiffs’ marks which is widely famous, thereby leading to infringement and passing off the goods of the defendants as that of the plaintiffs. The plaintiffs claim that a person of average intelligence will undoubtedly mistake the defendant travel agency to be an undertaking of the plaintiffs. The plaintiffs further state that the word AACHIhas earned a lot of goodwill and reputation over the years and the public is bound to presume that the plaintiffs have diversified and commenced a travel agency under the trade mark AACHI CALL DRIVERS & TRAVELS.The plaintiffs stated that the defendant does not have any registration for the impugned trade mark with respect to travel agency and that the plaintiffs have registered their trade mark AACHI / “IMAGE” with respect to travel and transport. The plaintiffs further stated that the blatant and conscious copy of their registered trademark by the defendant amounts to theft and that the defendant’s service is inferior in quality and substandard.

4. The defendant was served notice. The defendant did not choose to appear either in person or through counsel to defend the case and was called absent and was set ex parte by this Court on 05.07.2021.

5. The only issue that arises for consideration in the present suit is that whether the defendant, by using the mark AACHI CALL DRIVERS & TRAVELS/ “IMAGE” has infringed the plaintiffs ’trademarks AACHI/ and whether the same is deceptively, phonetically and visually identical to the trade mark of the plaintiff and as to whether the plaintiff is entitled for the reliefs sought for in this suit.

6. The General Manager of the 2nd plaintiff Company was examined-in-chief as PW-1. Ex Parte evidence was recorded and Ex.P-1 to Ex.P-19 were marked.

7. Heard Mrs. Gladys Daniel, learned counsel for the plaintiff and carefully perused the documents relied upon by the plaintiff.

8. On carefully going through Exhibits P-13, P-14, P-15 and P-16, it can be seen that the plaintiff is a registered trade mark owner of the marks AACHI/ “IMAGE”. The plaintiffs’ marks have distinct identity and are in usage since 1995. The word and label marks AACHI / “IMAGE” have become a well-known mark for masala and food products. The defendant who was aware about the same decided to make use of this mark for their travels. The defendants are passing off on the goodwill and reputation earned by the plaintiffs for over more than 40 years by adopting the prominent part of the plaintiffs’ mark AACHI.

9. From a careful perusal of Exhibit P13and P14, it is clear that the sole proprietor concern of the 1st plaintiff owns the intellectual property rights under the registered trade mark AACHI. From exhibits P-13toP-16,it is clear that the 1st plaintiff continues to use the trade mark AACHIthrough his licensees Aachi Spices and Foods Private Limited and the 2nd plaintiff. From the above-mentioned exhibits P-13 to P-16, it is clear that the 1st plaintiff owns the trade mark of AACHI under various labels and the 2nd plaintiff uses the same.

10. Further, the 1st plaintiff possesses the international registration (WIPO) under the Madrid protocol for the trade mark AACHI word under clauses 29, 30 and 43 in 107 countries the same is clear from the document marked as exhibit P18.The 1st plaintiff also possesses the international registration (WIPO) under the Madrid protocol, for the trade mark AACHIdevice under the same Clauses in 117 countries and the same is clear from the document marked as exhibits P-17 and P-18.

11. Exhibit P-19 contains the label of the defendant. A closer look at the trade mark AACHI CALL DRIVERS & TRAVELS/“IMAGE” which is used by the defendant shows that it is being used for running taxi services. This mark is phonetically and visually similar to the plaintiff’s trade marks AACHI/ “IMAGE”. Further, the plaintiffs has already acquired registrations with respect to travel arrangements and transport under registration nos. 3371007 for word mark AACHI and no. 3370968, under clause 39, for the device of “IMAGE” and the same is evident from Exhibit P15. The defendant does not have any registration for the impugned trade mark “IMAGE”. The defendant has adopted this trademark only with a view to exploit the commercial goodwill achieved by the plaintiffs.

12. It must be borne in mind that the consumer who avail the call taxi services will be in the category of a man of average intelligence and imperfect recollection. To such a man, there is absolutely no chance of drawing a distinction between the plaintiffs’ product and the defendant’s service. This is not a case of deceptive similarity but one of almost exact reproduction of the prominent part of the registered trademark of the plaintiffs. The defendants are deliberately using the trademark AACHI CALL DRIVERS & TRAVELS/ “IMAGE” to mislead the general public at large, and they are trying to cash on the goodwill and reputation enjoyed by the plaintiffs. A careful look at the impugned marks blatantly reveal that it is visually and phonetically identical to the prominent part of the plaintiffs’ registered trade mark.

13. It is plain from the facts of the case that this case squarely falls under the umbrella of doctrine of dilution. In the case of Caterpillar Inc. v. Mehtab Ahmed &Ors. reported in2002 SCC OnLine Del 865, the Hon’ble Delhi High Court held that dilution is not a fair practice of trade and commerce. The relevant paragraph from the judgment is extracted below:

16.So far as doctrine of dilution is concerned it is an independent and distinct doctrine. The underlying object of this doctrine is that there is presumption that the relevant customers start associating the mark or trademark with a new and different source. It results in smearing or partially affecting the descriptive link between the mark of the prior user and its goods. In other words, the link between the mark and the goods is blurred. It amounts to not only reducing the force or value of the trade mark but also it gradually tapers the commercial value of the marks slice by slice., Such kind of dilution is not a fair practice that is expected in trade and commerce.

14. Further in the case of James Chadwick & Bros. Lid v. The National Sewin Thread Co. Ltd. reported in MANU/MH/0063/1951, the Court ruled as under:

In an action for infringement what is important is to find out what was the distinguishing or essential feature of the trade mark already registered and what is the main feature or the main idea underlying the trade mark.

In Parle Products (f) Ltd. v. J.P. & Co. Mysore. reported in MANU/SC/0412/1972, the Hon’ble Supreme Court took the same view.

15. Further in the case of De Cordova v. Vick Chemical Company, reported in 68 R.P.C. 103, 106 it was held as under:

It has long been accepted that, if a word forming part of a mark has come in trade to be used to identify the goods of the owner of the mark, it is an infringement of the mark itself to use that word as the mark on part of the mark of another trader, for confusion is likely to result.

16. In the case of M/s KirorimalKashiram Marketing & Agencies Pvt. Ltd. v. M/s. Shree Sita Chawal Udyog Mill reported in 2010 SCC OnLine Del 2933,it was heldthat copying of a prominent part of a trademark of a person is prohibited, more so, when the same is a registered trademark. In the case of M/s. S. Oliver Bernd Freier GMBH & Co. KGv. M/s. Rasul Exports &Anr. reported in 2014 SCC OnLine Del 564,it was held that:

29. Even if a word forming part of the mark has come in trade to be used to identify the goods of the owner of the trade mark, it is an infringement of the mark itself to use that word as the mark or part of the mark of another trader for which confusion is likely to result.

17. In the present case,it is clear from the Exhibits submitted by the plaintiffs that their registered trade mark AACHI / “IMAGE” is a well-known mark, having been in the market since 1995. The mark AACHI/ “IMAGE” has come in trade to be used to identify the goods of the owner of the mark. The defendant has used this prominent word AACHI in their un-registered trademark AACHI CALL DRIVERS & TRAVELS/ “IMAGE” and though both the parties are involved in different businesses, this leads to dilution of the plaintiffs’ registered trademark and would cause irreparable harm to the goodwill and reputation earned by the plaintiffs over the years. The defendant’s mark is phonetically, structurally and visually identical to the prominent part of the plaintiffs’ trade mark and it is bound to cause confusion as both

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the products and the services will be made available to the general public at large. The above discussion leads to the conclusion that the mark AACHI CALL DRIVERS & TRAVELS / “IMAGE” used by the defendant has infringed the plaintiffs ’trademarks AACHI/ “IMAGE”. Accordingly, the plaintiffs are entitled for the reliefs sought for in this suit. The issue is answered accordingly. 18. The learned counsel for the plaintiffs in her oral arguments, pressed only for the reliefs of permanent injunction restraining the defendant from infringing or passing off of the plaintiffs’ registered trade mark i.e., reliefs (a) and (b) prayed for by them in the plaint. 19. In fine, there shall be a decree for permanent injunction, restraining the defendant, by itself, their servants, agents, men, or anyone claiming through them from advertising, offering for sale, running taxi services and running the website using same or similar or identical trade mark AACHI CALL DRIVERS & TRAVELS/ “IMAGE” or any other similar trademark or in any media and use the same in invoices, websites, letter heads and visiting cards, or any other goods or services by using any other trademark which is in any way visually or phonetically similar or any other mark identical or deceptively similar to the plaintiffs’ registered trade mark AACHI / “IMAGE” or in any other manner infringe or pass off the plaintiffs’ registered trade mark. 20. The suit is decreed by imposing a cost of Rs.25,000/-[Rupees Twenty Five Thousand only] payable by the defendant to the plaintiffs.
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