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M/s. Sri Tulasi Industries v/s M/s. Sri Sapthagiri Industries & Another

    Civil Miscellaneous Appeal No. 496 of 2020

    Decided On, 09 June 2021

    At, High Court of for the State of Telangana

    By, THE HONOURABLE MR. JUSTICE CHALLA KODANDA RAM

    For the Appellant: K. Hema Prakash Rao, Advocate. For the Respondents: Ashok Ram Kumar, Advocate.



Judgment Text

1. In this appeal, challenge is to the order dated 08.06.2020 passed by the learned Principal District Judge, at Mahabubnagar, in I.A.No.2190 of 2019 in O.S.No.210 of 2019, dismissing the application filed by the appellant/plaintiff under Order 39 Rules 1 and 2 of Code of Civil Procedure, seeking temporary injunction against the respondents from:

“(a) infringing the exclusive statutory right to the registered trade mark ‘Tasty Gold’;

(b) copyright o the appellant to the artistic features including the colour scheme, layout and the trade dress appearing on the label; and

(c) passing off their oils bearing the impugned trademarks ‘Tasty Drop’ & ‘Tasty Plus+’ and other aesthetic features including the colour scheme, layout and trade dress or any mark which is identical with or similar or deceptively similar to the registered trademark, ‘Tasty Gold’ as oils of the appellant’s manufacture.”

2. It is the case of the appellant/plaintiff that the appellant is a firm dealing in edible oils under the registered trade mark styled as “TASTY GOLD”; that the predecessor of the appellant-firm had surveyed the market and only after satisfying that no other firm has the trade mark with the unique design and style as depicted in “TASTY GOLD” logo, obtained the registration vide No.3136998 dated 16.12.2016 in Class-29 under the Trade Marks Act, 1999; that the predecessor of the appellant is the originator of aesthetic features on the label as appearing in “TASTY GOLD” logo and enjoys copyright for the trade mark; that the trade mark was assigned to the appellant firm vide Deed of Assignment dated 11.10.2018 thereby the appellant became the “subsequent proprietors” of the trade mark; that the appellant firm obtained registration of the trademark full label “TASTY GOLD” vide No.4039640 in Class-29 under the Trade Marks Act; that the appellant has been spending huge money in promoting its goods which helped in their substantial turnover and also considerable goodwill and reputation of the trade mark; that to ensure quality of the edible oils, the appellant periodically sends the same for testing; that the respondent is a newcomer into the business of edible oils and located near the appellant firm; that the respondent’s application No.3999625 for registration of mark ‘TASTY DROPS’ has a mention that the same is ‘proposed to be used’ as on 16.11.2018; that the application of the respondent has been refused by the authorities; that the appellant having noticed that the respondent is using similar pouches containing the mark ‘TASTY DROPS’ amounts to infringement of the rights of the appellant under the Trade Marks Act and Copyright Act and the respondent has been passing off his goods as the goods of appellant firm; that the appellant issued “Cease and Desist” notice dated 15.12.2018 to the respondent, to which the respondent issued a vague reply dated 25.12.2018; that the appellant filed the suit on 11.11.2019 and an injunction order was granted against the respondent in I.A.No.2190 of 2019; that after hearing both the parties, the Court below dismissed the I.A.No.2190 of 2019 and vacated the injunction order.

3. It is the case of the respondent No.1 that it is a partnership firm registered under the Indian Partnership Act dealing in manufacture, processing and marketing of edible oils under various trademarks, more specifically “TASTY DROPS” and “TASTY PLUS+”; that the contention of the appellant that the trademarks of the respondent are deceptively similar is false; that the word “TASTY” is a descriptive word and the appellant cannot claim exclusive right over the same; that the words are phonetically identical cannot be maintained as the words “Drops, Plus+ are not found in the appellant’s trade mark; that the words “Drops” and “Plus+” are completely different suffixes and are not identical to the word “Gold” suffix of the appellant; that the mark of the appellant “Tasty Gold” is a generic word having individual meaning for each word and such word is a usual term and can be used by anybody and therefore cannot qualify for any protection; that the appellant cannot claim monopoly over the word “Tasty”; that the respondent has not copied on its pouches the artistic and aesthetic features and design of the appellant and the respondent’s mark pouches contain an artifact of a lady which cannot be seen in the packaging pouches of the appellant; that as per the Trade Marks Act, the whole trade mark has to be seen and not the individual elements inasmuch as the word “Tasty” is only an element of mark of appellant and not the complete trade mark; that the application of the appellant vide No.4376849 dated 13.12.2019 for registration of the word “Tasty” has been objected to and kept pending by the authorities; that Section 30 of the Trade Marks Act, 1999, limits the rights in the Registration to use the marks (words)/images (logos) which are common to trade and adopted by the respondent with honest practices; that the respondent filed various pouches commonly used in the trade that uses the words “Tasty” as well as “Gold” as well as the oil and palm seeds, groundnut, sunflower in common parlance for edible oil; that Section 30(2)(a) clearly exempts the usage of the word which indicates kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; that the word “Tasty” is indicative of the characteristics of the goods being cooked using the oil; that though the word “Gold” also indicates the quality of the product and does not extend any protection, the respondent did not choose to use “GOLD” though its usage is permitted; that a combined reading of Sections 17, 27, 28, 29, 30 clearly establish that there is no infringement of the appellant mark “Tasty Gold” by the respondent’s usage of marks “Tasty Drops” or “Tasty Plus+”; that the words “Tasty” and “Gold” being generic in nature, the appellant cannot claim any protection or monopoly.

4. Heard the learned counsel for the appellant; and the learned counsel for the respondent.

5. Learned counsel for the appellant contended that the trial Court erred in observing that there is no prima facie case established by the appellant in support of exclusive usage of the mark “TASTY GOLD” and that it erred in observing that the mark “TASTY GOLD” is generic in nature, by relying on the decision of Delhi High Court in Time Incorporated v. Lokesh Srivastava (2005 (3) PTC 3 (Del). Learned counsel further contended that the learned Court below failed to notice the trademark in the citation relied on by the respondent is “SUGAR FREE” and not “TASTY GOLD”. It that the Court below had failed to appreciate that the suit relates to grant of injunction and not for declaration and the Court below had overstepped in holding the mark TASTY GOLD as generic thereby made it open to public at large for use; that the Court below failed to assign reason as to how the interim order granted on prima facie case on 11.11.2019 can be vacated where there is no change in prima facie case; that the Court below ought to have considered the law settled by the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (MANU/SC/0197/1964 = = AIR 1965 SC 980), the marks “NAVARATNA PHARMACY” and “NAVARATNA PHARMACEUTICAL LABORATORIES”, and in Ruston and Hornsby Ltd v. Zamindara Engg. Co. (AIR 1970 SC 1649), the marks “RUSTON” and “RUSTAM INDIA” were held to be confusingly similar.

6. Learned counsel for the appellant further contended that the Court below failed to appreciate the appellant is the registered proprietor of trademark “TASTY GOLD” and ignored the provisions of Section 29(3) of the Trade Marks Act; and the Court below failed to notice the action of infringement under the Copyright Act basing on the “artistic work” contained on the pouches used by it for packing edible oils. It is further contended that the Court below failed to consider the rights of the appellant firm who is the prior user and has completely ignored the huge turnovers clocked by it from the year 2000 and that the respondent has also not denied that the appellant is the prior user of the mark “TASTY GOLD”, and the Court below erred in comparing the registered label marks Exs.P1 and P13 of the appellant rather than comparing the appellant’s mark and respondent’s mark. Learned counsel further contends that the Court below erred in not taking into consideration the enormous goodwill that has been built over the mark of the appellant while deciding the passing off action, and that the Court below failed to consider that even descriptive mark is entitled for the relief of injunction under common law.

7. Per contra, learned counsel for the respondent, while supporting the order of the learned Principal District Judge, submits that the learned Judge had elaborated the respective pleadings and found that the claim of the appellant that he is the user of the trade mark TASTY GOLD since the year 2000 was not established by the appellant and there are a large number of edible products manufacturers using the words TASTY and GOLD with respect to their respective products and therefore there is no distinctness associated with the trade mark TASTY GOLD as espoused by the petitioner and therefore the Court below had found that there is no prima facie case made out by the appellant, and had rightly vacated the ex parte injunction order passed in favour of the appellant on 11.11.2019.

8. Learned counsel for the respondent would also, by placing reliance on the judgment of the High Court of Madras in Patanjali Ayurved Limited v. Arudra Engineers Private Limited (MANU/TN/0387/2021) contend that the protection afforded in terms of Section 17 of the Trade Marks Act is not for “individual parts/components” of a trademark but for the “whole and entire trade mark”. Learned counsel places particular reliance on paragraphs 79, 81, 82 and 83 of the said judgment, which are extracted hereunder:

“79. Further, even under Section 17 of the Trade Marks Act, 1999, protection is only afforded to the entire trademark as registered, and not to mere parts of the trade mark. In the instant case, registration has been obtained by the plaintiff over the label with the words and alpha numeral Coronil 92B and Coronil 213 SPL as a composite mark and not as a word for “Coronil” as envisaged under Section 15. Therefore, for the purpose of Section 29 (4) of the Trade Marks Act, 1999, the respondent/plaintiff cannot claim monopoly over the word "Coronil" as it was registered as a part of composite mark. We also wish to observe that when each part of a label mark is capable of being individually registered, we cannot dissect and split up into its component parts and grant an injunction. In this regard, we are fortified by the decision of the Division Bench of this Court in Rhizome Distilleries case, mentioned supra and useful reference can be made to the observations made therein:-

"Conflicting composition marks are to be compared by looking at them as a whole, rather than breaking the marks up into their component parts for comparison. This is the 'anti- dissection' rule.... A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It has been held to be a violation of the antidissection rule to focus upon the 'prominent' feature of a mark and decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite mark has no trademark significance, leading to a direct comparison between only that which remains."

81. Though the respondent's/plaintiff’s label registered as a trademark and incorporates the word “Coronil”, it cannot be said that the word “Coronil” adopted by the appellants/defendants was similar to that of the registered labels of the respondent/plaintiff.

82. It would have been different if the respondent/plaintiff had obtained a registration of the word “Coronil” or any other word which was phonetically similar or identical with the aforesaid word. Therefore, it cannot be said that the respondent/plaintiff had established a prima facie for the purpose of grant of interim relief for the alleged infringement of trademark under Section 29(4) of the Trademarks Act, 1999. That apart, respondent/plaintiff was also required to satisfy reputation in India and that the use of the offending word as a trademark by the appellants/defendants was “without due cause” and was intended to take unfair advantage by using the offending mark and that such use was detrimental to the distinctive character or reputation in the registered trademark. These are matters which are to be determined only after trial.

83. As the respondent/plaintiff had not claimed any monopoly over the word “Cornonil” by obtaining a separate registration of the aforesaid word as a word mark, we are of the prima facie view that the impugned order is liable to be set aside even if respondent/plaintiff may have a case for dilution of its trademark by the appellants/defendants. In case, there is dilution of the trademark/label of the respondent/plaintiff, the respondent/plaintiff can claim damages which has to be determined only after a trial.”

9. Learned counsel for the respondent would further contend, by placing reliance on the order of the Supreme Court in Bajaj Auto Limited v. TVS Motor Company Limited (Civil Appeal No.6390 of 2009), that in cases relating to trade marks, the Courts shall endeavour to dispose of the main suit itself rather than deciding the interlocutory applications and the said rationale in the Civil Appeal before the Supreme Court would equally apply to the present CMA as well. It is further contended that as the Court below found that there is no prima facie case made out by the appellant, the ex parte interim injunction was vacated and therefore this Hon’ ble Court may dispose of this civil miscellaneous appeal by directing the Court below to dispose of the Original Suit itself within a specific timeframe as may be set by this Court and his client is ready to cooperate with the trial.

10. Having considered the respective pleadings and perusing the material on record, at the outset, it cannot be said that the appellant had failed to establish his claim of registered user of the mark TASTY GOLD from the year 2000. It may be noted that it is not the case of either the respondent or the finding recorded by the Court below that the trade mark itself was not registered as pleaded by the respondent, and the registration of trade mark vide certificate dated 15.06.2019, and the appellant was using the mark TASTY GOLD at least since the year 2002 as evidenced by few of the sale invoices placed before the Court below are not in dispute.

11. The case pleaded by the appellant is that the respondent is marketing similar products that are being manufactured and marked by the appellant, in the form of pouches/packaging, and the packaging/pouches are deceptively similar to that of the appellant thereby passing off the goods as if they are manufactured and marketed by the appellant.

12. In this context, the prayer sought/relief claimed by the appellant in the Original Suit No.210 of 2019 requires to be noticed:

“The plaintiff prays that the Hon’ ble Court will be pleased to pass a decree:

(a) granting permanent injunction restraining the defendants, their servants, subordinates, assignees, licensees, representatives, stockists, dealers, agents, successors-in-interest and all other persons claiming under them or acting in concert with them or acting at their instance from infringing the exclusive statutory right of the plaintiff to the trademark, TASTY GOLD under the Trademarks Act, 1999.

(b) granting permanent injunction restraining the defendants, their servants, subordinates, assignees, licensees, representatives, stockists, dealers, agents, successors-in-interest and all other persons claiming under them or acting in concert with them or acting at their instance from infringing copyright of the plaintiff to the aesthetic features, colour scheme, layout and the trade dress appearing on the label under the Copyright Act, 1957.

(c) granting permanent injunction restraining the defendants from passing off their oils bearing the impugned trademarks, “TASTY DROPS” and “TASTY PLUS+” and other artistic features, the colour scheme, the layout and the trade dress or any mark which is identical with or similar, or deceptively similar to the registered trademark, TASTY GOLD as oils manufactured by the plaintiff.

(d) granting damages against the defendants for having caused loss to the business, reputation and goodwill to the registered trademark and other artistic features appearing on the label of the plaintiff;

(e) to deliver up for destruction of all the impugned labels of the defendants containing the trademarks, TASTY DROPS and TASTY PLUS+ and other artistic features, the colour scheme, the layout and the trade dress.

(f) costs of the suit;

(g) such other and further reliefs as the nature and circumstances of the case may require.”

13. Having perused the pictures/photographs/images produced by both the learned counsels, this Court though finds certain dissimilarities, however, in the light of the factors/parameters laid down by the Supreme Court in Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd (AIR 2001 SC 1952), the learned Principal District Judge failed to examine and give a finding with respect to similarities, which were required to be taken into consideration, as emphasised in paragraph 35 of the judgment, which reads as under:

“Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:

a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as trade marks.

d) The similarity in the nature, character and performance of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the goods and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

14. Further, in paragraph 29 of Kaviraj Pandit (2 supra), the Hon’ ble Supreme Court held as under:

“29. When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide s. 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.”

15. In the case on hand, while the descriptive words used though are different, the first word TASTY being common in the products of both appellant and respondent, and the second word being different, and further the respondent’s label on the pouches depict an image of a woman, the differences are required to be viewed in the light of the parameters/factors laid down by the Supreme Court as extracted in paragraph 35 (c), (d) and (e) of Cadila Health Care Ltd (6 supra), and also paragraph 29 of the judgment of Supreme Court in Kaviraj Pandit (2 supra).

16. In the present case, the pleading which is not in dispute is that the appellant is in the business of manufacturing and marketing of edible oils since the year 2000 and their mark was registered in the year 2000 initially, whereas the respondent commenced the business in edible oils only in the year 2018 and the respondent had applied for registration of the trade mark in the year 2018. There is also no dispute that the respondent is manufacturing and marketing the product in the same place, within the same area/locality in Kamareddy, and the marketing is also within the same area. In that view of the matter, at this stage, it cannot be gain said prima facie that there is no goodwill gained by the appellant in the edible oil business since the year 2000 and the respondent is trying to ride on that goodwill gained by the appellant. Prima facie it cannot be said that there is no loss that is being caused to the appellant though the measure of loss is a

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matter which is required to be established in the trial. 17. The judgment of the High Court of Madras in Patanjali Ayurved (4 supra) relied on by the learned counsel for the respondent is distinguishable on facts, as in that case the products manufactured and marketed in Patanjali Ayurved (4 supra) were entirely different, one being an engineering/industrial product, and the other being an immunity booster. In the present case on hand, the extent to which there is similarity or dissimilarity between the products of the appellant and respondent is an aspect that is required to be considered in during the course of full fledged trial. 18. In the facts of the present case, as stated supra, the learned Principal District Judge failed to consider the aspects of balance of convenience, and irreparable loss, and the learned Judge was content with dismissing the interlocutory application holding that there is no prima facie case made out. 19. Having regard to the facts placed on record, prima facie, this Court is of the opinion that there are certain similarities between the registered trade mark/label of the appellant and the mark being used by the respondent; and the appellant being a prior user of the trade mark, in point of time, the appellant cannot be said to have not established some goodwill in the area/locality of operation of business of appellant and thus cannot be said to be put to loss and thus the balance of convenience is in favour of the appellant for continuation of the injunction initially granted by the learned Principal District Judge, till the disposal of the main case. 20. Accordingly, the Civil Miscellaneous Appeal is allowed by setting aside the impugned order dated 08.06.2020 in I.A.No.2190 of 2019, and restoring the injunction order passed on 11.11.2019 against the respondent herein till the disposal of the Original Suit. The learned Principal District Judge shall dispose of the Original Suit within a period of six months from the date of receipt of a copy of this order. It is made clear that the observations made in this civil miscellaneous appeal are only for the purpose of disposal of the appeal, and the learned Principal District Judge shall dispose of the Original Suit strictly on merits basing on the oral and documentary evidence that may be adduced by both the parties, uninfluenced by the observations made by this Court in this civil miscellaneous appeal. There shall be no order as to costs. Miscellaneous petitions, if any pending in this appeal, shall stand closed.
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