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Gem Edible Oil Private Limited, Represented by its Managing Director, K.M. Chinnadurai, Coimbatore v/s Carrying on business at; Gem Edible Oil Private Limited, Chennai

    C.S. No. 30 of 2020

    Decided On, 01 April 2021

    At, High Court of Judicature at Madras

    By, THE HONOURABLE MR. JUSTICE C.V. KARTHIKEYAN

    For the Plaintiff: M. Nandhakumar, Eswar, Advocates. For the Defendant: Set ex-parte.



Judgment Text

(Prayer: This suit filed under Order IV Rule 1 of Original Side Rules, Order VII Rule 1 of CPC read with Sections 27, 134(1) of the Trade Marks Act, 1999 and Section 62(2) of the Copyrights Act, and Section 7 Proviso 1 of the Commercial Court, Commercial Division and Commercial Appellate Division of the High Court Act, 2016, prayed for a judgment and decree against the defendant for,

a).permanent injunction restraining the defendant, their men, representatives, authorized persons, agents, staff or whomsoever claiming through or under the defendant from infringing the copyright of artistic work with deceptive and similar trade mark, trade dress, including words, pictures, layout design, label, packing material in the name and style of “CLASSIC GOLD” similar to the trade mark “GEM'S GOLD” registered by plaintiff.

b).permanent injunction restraining the defendant, their men representatives, authorised persons, agents, staff or whomsoever claiming through or under the defendant from using the deceptive and similar trade mark, trade dress, including words, pictures, layout, design, lable, packing material in the name and style of “CLASSIC GOLD” in any way identical or similar to the plaintiff's registered trade mark “GEM'S GOLD”.

c).permanent injunction restraining the defendant, their men, representatives, authorised person, agents, staff or whomsoever claiming through or under the defendant from infringing the plaintiff's registered trade mark of “GEM'S GOLD”.

d).permanent injunction restraining the defendant,their men, representatives, authorised persons, agents, staff or whomsoever claiming through under the defendant from passing off “GEM'S GOLD” being the registered trade mark by the plaintiff.

e).To pay the cost of the suit.)

1. The suit had been filed under Sections 27, 134(1) of the Trade Marks Act, 1999 and Section 62(2) of the Copyright Act, 1957 read with relevant provisions of the Code of Civil Procedure, 1908 and the Original Side Rules of the Madras High Court and the Commercial Courts Act, 2015, seeking a judgment and decree against the defendant from infringing the artistic work and trade dress similar to the trademark of 'GEM'S GOLD' registered by the plaintiff and restraining the defendant from passing off their product as if they are the products of the plaintiff and for costs.

2. The plaintiff is a Company registered under the Companies Act, 1956, carrying on business since 2005 in the field of refining crude Sunflower Oil into refined Sunflower Oil and trading the refined Sunflower Oil in the market. The plaintiff imports huge quantity of crude Sunflower Oil from the International Oil Market and refine them into the refined Sunflower Oil and market them in the name and style of GEM'S GOLD. The name GEM'S GOLD had been registered under the Trade Marks Act, 1999 in Certificate No.2962026. The plaintiff had also obtained necessary licenses from the Food Safety and Standards Authority of India and from the Department of Agriculture and Cooperation for refining import Crude Sunflower Oil into refined Sunflower and packing oil in the name and style of GEM'S GOLD and selling / trading the same across the country.

3. The plaintiff also designed an artistic work in a unique packing cover with particular colour scheme and created a distinct label and image and identity for the brand 'GEM'S GOLD'. The plaintiff claims to be the owner for the said label. The plaintiff also claims that they have built up substantial goodwill and reputation in the market.

4. The package of the plaintiff is given below:

“IMAGE”

5. The plaintiff came to know that the defendant had been selling Sunflower oil under the name 'CLASSIC GOLD' in a package which was found to be deceptively similar to that of the plaintiff.

6. The packing cover of the defendant is shown below:

“IMAGE”

7. It has been claimed that the defendant had adopted a similar package to encroach on the goodwill and reputation built by the plaintiff. It had been stated by the plaintiff that the defendant had adopted a similar colour scheme as that of the plaintiff with dishonest intention. The plaintiff also forwarded the oil of the defendant to verify the quality of the oil. A report had been received from a laboratory that the oil of the defendant did not meet the requirements of the Food Safety and Standards Authority of India. The plaintiff had issued a cease and desist notice on 16.10.2019. The defendant issued a reply dated 29.11.2019 wherein they have stated that they are prepared to change their packing without any hesitation. However, the defendant continued to infringe on the registered trademark and copyright of the plaintiff. It is under these circumstances, that the suit had been filed seeking the reliefs as stated above.

8. Summons had been served on the defendant. The name was printed in the cause list on 17.03.2020. Since there was no representation, the defendant was set ex-parte.

9. The plaintiff was then invited to lead ex-parte evidence.

10. The plaintiff then filed the proof affidavit of P.Mohanraj, PW-1, Authorised Signatory of the plaintiff company. The Original Authorization letter was marked as Ex.P1. The copy of the certificate of Incorporation of plaintiff was marked as Ex.P2. The copy of the registered Trademark Certificate issued on 28.03.2017 dated 13.05.2015 was marked as Ex.P3. This had been published in the Trademark Journal No.1755 dated 25.07.2016. That document had been marked as Ex.P4. The certificate issued by the Department of Agriculture and Cooperation, Directorate of Marketing & Inspection dated 08.09.2015 was marked as Ex.P5. The copy of the certificate issued by the Food Safety and Standards Authority of India dated 16.10.2017 was marked as Ex.P6. The original packing cover of the plaintiff was marked as Ex.P8. The packing cover of the defendant was marked as Ex.P9. The Legal notice issued by the plaintiff was marked as Ex.P11 and the acknowledgement card was marked as Ex.P12. The copy of the laboratory report dated 26.11.2019 was marked as Ex.P13. The copy of the reply notice dated 29.11.2019 was marked as Ex.P14.

11. Drawing reference to the said documents, Mr.M.Nandhakumar, learned counsel for the plaintiff pointed out that the plaintiff has proved registration of the trademark and also proprietorship to the particular colour scheme and trade dressage of their packages. They also obtained necessary certificates from the various statutory authorities for the business. Exs.P8 and P9 were referred by the learned counsel who stated that the defendant had deliberately copied the colour scheme with sole intention to encroach on the goodwill and reputation built by the plaintiff. Ex.P13 was also pointed out more to question the quality of the oil of the defendant and to pointed out that it was not up to the requirements expected by the Food Safety Standards Authority of India. The reply notice Ex.P14 was also pointed out. Therein the defendant had accepted to bring out necessary changes in their colour scheme.

12. The learned counsel for the plaintiff therefore stated that the plaintiff has established a case for grant of reliefs as claimed in the plaint.

13. I have carefully, considered the material records of the case.

14. As seen, the plaintiff has registration for their trademark and registration from the statutory authorities for their business. They have been using the trademark with the particular colour scheme and dressage continuously from the date of incorporation. The defendant is a later entrant into the market. It is also seen that the quality of the oil marketed by them is also not to the standard expected by the Food Safety Standards Authority of India.

15. Naturally, if the general public were to be misled into thinking that the products of the defendant are actually the products of the plaintiff, then the reputation of the plaintiff would get seriously affected.

16. In view of the registration of the trademark, I hold that the plaintiff has made out a strong case for grant of injunction protecting the trademark GEM'S GOLD. Documents filed substantiate that the claim of the plaintiff is bonafide. The defendant had not appeared before this Court even though summons had been served. It is clear that they are not interested in participating in the judicial p

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roceedings. 17. In view of the above reasons, the suit is decreed as prayed with costs. 18. Insofar as the costs are concerned, in view of the fact that the Defendant has shown scant regard for the sanctity of the judicial proceedings by deliberately avoiding appearance, I hold that the plaintiff is entitled to costs as determined under the amended Section 35 of the Code of Civil Procedure as applicable to the Commercial Division of the High Court. 19. The Registry is delegated by the Court to determine the costs as per the Bill of Costs submitted by the plaintiff in accordance with Section 35 of C.P.C., as amended by the Commercial Courts Act, 2015. The plaintiff is specifically entitled to the fees and expenses of the witness, the legal fees and expenses incurred and for any other expenses incurred in connection with the judicial proceedings and also for recovery of the actual Court Fees paid into Court.
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