w w w . L a w y e r S e r v i c e s . i n



Shyam Investments, Rep. by its Partner Nina Reddy & Another v/s Masti Health & Beauty Pvt. Ltd., Hyderabad


Company & Directors' Information:- A M R INVESTMENTS PRIVATE LIMITED [Under Liquidation] CIN = U65190MH2007PTC171972

Company & Directors' Information:- K F INVESTMENTS PRIVATE LIMITED [Active] CIN = U74990KA2011PTC059232

Company & Directors' Information:- SHYAM CORPORATION PRIVATE LIMITED [Active] CIN = U17120GJ2010PTC060509

Company & Directors' Information:- K S R (J AND K) INVESTMENTS PRIVATE LIMITED [Amalgamated] CIN = U67120JK1991PTC001234

Company & Directors' Information:- L P INVESTMENTS LIMITED [Active] CIN = U65921PB1974PLC003526

Company & Directors' Information:- M H M G INVESTMENTS LIMITED [Active] CIN = U17232WB1988PLC044148

Company & Directors' Information:- REP CORPORATION PRIVATE LIMITED [Strike Off] CIN = U26921TN2005PTC055138

Company & Directors' Information:- S B M INVESTMENTS PRIVATE LIMITED [Active] CIN = U67120WB1996PTC117347

Company & Directors' Information:- V B INVESTMENTS PRIVATE LIMITED [Active] CIN = U17100GJ1983PTC005999

Company & Directors' Information:- V B INVESTMENTS PRIVATE LIMITED [Active] CIN = U65910GJ1983PTC005999

Company & Directors' Information:- S & S INVESTMENTS LIMITED [Amalgamated] CIN = U65993TN1980PLC008148

Company & Directors' Information:- G. K. INVESTMENTS LTD [Active] CIN = U65993WB1974PLC029382

Company & Directors' Information:- H L A INVESTMENTS PRIVATE LIMITED [Active] CIN = U74899DL1994PTC057224

Company & Directors' Information:- H A B INVESTMENTS PRIVATE LIMITED [Active] CIN = U70109PB2008PTC031708

Company & Directors' Information:- T R INVESTMENTS PRIVATE LIMITED [Active] CIN = U67120WB1995PTC110837

Company & Directors' Information:- J S M INVESTMENTS LTD [Active] CIN = L67120WB1981PLC034027

Company & Directors' Information:- O K INVESTMENTS PVT LTD [Active] CIN = U51109WB1985PTC039619

Company & Directors' Information:- G M B INVESTMENTS PVT LTD [Amalgamated] CIN = U67120WB1985PTC038868

Company & Directors' Information:- J AND S INVESTMENTS PRIVATE LIMITED [Active] CIN = U65993MH1978PTC020524

Company & Directors' Information:- P N INVESTMENTS PRIVATE LIMITED [Active] CIN = U65993TN1980PTC008346

Company & Directors' Information:- S S INVESTMENTS PVT LTD [Active] CIN = U70109AP1984PTC005156

Company & Directors' Information:- T K INVESTMENTS PVT LTD [Active] CIN = U65921PB1983PTC005651

Company & Directors' Information:- E I INVESTMENTS PVT LTD [Active] CIN = U65999WB1990PTC050386

Company & Directors' Information:- K B INVESTMENTS PRIVATE LIMITED [Active] CIN = U67120MH1978PTC020520

Company & Directors' Information:- S D INVESTMENTS PRIVATE LIMITED [Active] CIN = U65910TG1988PTC008691

Company & Directors' Information:- C N M P INVESTMENTS PRIVATE LIMITED [Active] CIN = U74899DL1983PTC016061

Company & Directors' Information:- S D INVESTMENTS PRIVATE LIMITED [Active] CIN = U65910AP1988PTC008691

Company & Directors' Information:- I R S INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U67120DL1987PTC027943

Company & Directors' Information:- H P M INVESTMENTS LIMITED [Strike Off] CIN = U67120DL1966PLC004591

Company & Directors' Information:- E INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65100PY2011PTC002552

Company & Directors' Information:- A C K INVESTMENTS PVT LTD [Strike Off] CIN = U65910GJ1981PTC004097

Company & Directors' Information:- REDDY INVESTMENTS PVT. LTD. [Active] CIN = U65993TG1991PTC012261

Company & Directors' Information:- M & L INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65993TN1982PTC009322

Company & Directors' Information:- M S INVESTMENTS PVT LTD [Active] CIN = U67120AS1995PTC004586

Company & Directors' Information:- B P INVESTMENTS LTD [Active] CIN = U65993WB1971PLC028138

Company & Directors' Information:- SHYAM & SHYAM (INDIA) PVT LTD [Active] CIN = U23101WB1983PTC036757

Company & Directors' Information:- A P M INVESTMENTS LIMITED [Amalgamated] CIN = U65993TZ1980PLC003978

Company & Directors' Information:- A V INVESTMENTS PVT LTD [Strike Off] CIN = U65910GJ1981PTC004714

Company & Directors' Information:- R K S INVESTMENTS PRIVATE LIMITED [Active] CIN = U65993KA1980PTC003779

Company & Directors' Information:- D P INVESTMENTS PRIVATE LIMITED [Active] CIN = U65990MH1972PTC016045

Company & Directors' Information:- G R INVESTMENTS (INDIA) PRIVATE LIMITED [Strike Off] CIN = U74899DL1981PTC012305

Company & Directors' Information:- REDDY LIMITED [Active] CIN = U24232DL2012PLC236860

Company & Directors' Information:- I D S INVESTMENTS PRIVATE LIMITED [Active] CIN = U00000DL1985PTC020287

Company & Directors' Information:- S. O. HEALTH CORPORATION PRIVATE LIMITED [Active] CIN = U74999TG2017PTC119704

Company & Directors' Information:- A & A INVESTMENTS INDIA PRIVATE LIMITED [Under Process of Striking Off] CIN = U74999TN2008PTC068491

Company & Directors' Information:- H R INVESTMENTS PVT LTD [Strike Off] CIN = U67120CH1992PTC012458

Company & Directors' Information:- K. B. INVESTMENTS PRIVATE LIMITED [Amalgamated] CIN = U67120OR1983PTC001163

Company & Directors' Information:- C F C INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65993WB1997PTC085444

Company & Directors' Information:- H A INVESTMENTS PRIVATE LIMITED [Active] CIN = U67120DL1996PTC076439

Company & Directors' Information:- C. I. INVESTMENTS PRIVATE LIMITED [Active] CIN = U70101MP2007PTC019874

Company & Directors' Information:- S G P INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65990MH1999PTC122024

Company & Directors' Information:- R G INVESTMENTS PRIVATE LIMITED [Active] CIN = U67120MH1979PTC021933

Company & Directors' Information:- P R INVESTMENTS PVT LTD [Strike Off] CIN = U67190WB1995PTC069706

Company & Directors' Information:- M C G INVESTMENTS PRIVATE LIMITED [Active] CIN = U45400GJ2000PTC038748

Company & Directors' Information:- C L V INVESTMENTS PVT LTD [Strike Off] CIN = U45205WB1980PTC032572

Company & Directors' Information:- V A INVESTMENTS P LTD. [Active] CIN = U65991TN1990PTC019915

Company & Directors' Information:- P A INVESTMENTS LTD [Strike Off] CIN = U65993WB1981PLC033620

Company & Directors' Information:- K P INVESTMENTS PVT LTD [Amalgamated] CIN = U65993MH1988PTC048956

Company & Directors' Information:- S C F INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U74899DL1991PTC044238

Company & Directors' Information:- E-HEALTH INDIA PRIVATE LIMITED [Strike Off] CIN = U85110DL2001PTC113461

Company & Directors' Information:- BEAUTY HEALTH INDIA PRIVATE LIMITED [Strike Off] CIN = U24246GJ2010PTC060547

Company & Directors' Information:- SHYAM G LTD [Strike Off] CIN = U36911RJ1984PLC002921

Company & Directors' Information:- M P INVESTMENTS PVT LTD [Strike Off] CIN = U64991MP1974PTC001292

Company & Directors' Information:- SHYAM COMPANY LIMITED [Strike Off] CIN = U17111UP1946PLC001423

Company & Directors' Information:- S M B INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65921UP1994PTC016536

Company & Directors' Information:- R J INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65993MH1988PTC049997

Company & Directors' Information:- M V K INVESTMENTS PVT LTD [Strike Off] CIN = U99999MH1980PTC022879

Company & Directors' Information:- R J INVESTMENTS PRIVATE LIMITED [Not available for efiling] CIN = U99999MH1988PTC049997

Company & Directors' Information:- L B INVESTMENTS PVT LTD [Strike Off] CIN = U67120MH1981PTC024692

Company & Directors' Information:- K A R INVESTMENTS PVT LTD [Strike Off] CIN = U65993TG1985PTC005344

Company & Directors' Information:- B L INVESTMENTS PVT LTD [Strike Off] CIN = U65990GJ1982PTC005349

Company & Directors' Information:- H S INVESTMENTS PRIVATE LIMITED [Active] CIN = U74899DL1979PTC009573

Company & Directors' Information:- AND INVESTMENTS PRIVATE LTD [Strike Off] CIN = U65923DL1981PTC012382

Company & Directors' Information:- T. T. INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U67120UP1994PTC017279

Company & Directors' Information:- H T S INVESTMENTS PVT LTD [Strike Off] CIN = U65921PB1986PTC006934

Company & Directors' Information:- F C P INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U99999MH1981PTC023913

Company & Directors' Information:- R D INVESTMENTS PVT LTD [Not available for efiling] CIN = U51909PB1985PTC006323

Company & Directors' Information:- B Y INVESTMENTS PVT LTD [Active] CIN = U65990MH1980PTC022770

Company & Directors' Information:- J INVESTMENTS PRIVATE LIMITED [Active] CIN = U65993TN1979PTC007776

Company & Directors' Information:- A T INVESTMENTS PRIVATE LTD [Active] CIN = U74899DL1986PTC024983

Company & Directors' Information:- BEAUTY INVESTMENTS PRIVATE LIMITED [Active] CIN = U65910GJ1979PTC003297

Company & Directors' Information:- V P INVESTMENTS PVT LTD [Dormant under section 455] CIN = U65910GJ1981PTC004115

Company & Directors' Information:- A P INVESTMENTS PVT LTD [Dormant under section 455] CIN = U65910GJ1981PTC004116

Company & Directors' Information:- A J INVESTMENTS PVT LTD [Active] CIN = U65910GJ1981PTC004847

Company & Directors' Information:- K J A INVESTMENTS PRIVATE LIMITED [Amalgamated] CIN = U65910GJ1981PTC004849

Company & Directors' Information:- D K INVESTMENTS PVT LTD [Strike Off] CIN = U65910GJ1982PTC005518

Company & Directors' Information:- C AND M INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U65993RJ1995PTC010922

Company & Directors' Information:- V. V. INVESTMENTS PRIVATE LIMITED. [Strike Off] CIN = U65993JK1984PTC000665

Company & Directors' Information:- A R INVESTMENTS PRIVATE LIMITED [Strike Off] CIN = U99999MH1978PTC020588

Company & Directors' Information:- D S REDDY & CO PVT LTD [Strike Off] CIN = U51102TN1952PTC000600

Company & Directors' Information:- O P INVESTMENTS PVT. LTD. [Strike Off] CIN = U67120HR1995PTC032595

Company & Directors' Information:- P P S INVESTMENTS COMPANY. [Strike Off] CIN = U31200GA1978ULL000325

    C.S. No. 345 of 2011

    Decided On, 11 September 2020

    At, High Court of Judicature at Madras

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

    For the Plaintiffs: P.S. Raman, Senior Counsel, Arun C. Mohan, Advocate. For the Defendant: M.K. Kabir, Senior Counsel, Anand Sashidharan, Advocate.



Judgment Text


(Prayer: This Civil Suit is filed under Order IV Rule 1 of Original Side Rules read with Order VII Rule 1 of CPC., and Sections 27, 28, 29, 134 and 135 of Trade Marks Act, 1999 praying to grant a Judgment and Decree on the following reliefs:

(a) A permanent injunction restraining the defendant, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from in any manner using or otherwise dealing with the trade mark/trade name/domain name O2 or any other mark which is identical/similar to the plaintiff’s registered trademark amounting to infringement of the trademark O2 registered under No. 1584694 in classes 5, 28 and 42 or in any other manner whatsoever;

(b) A permanent injunction restraining the defendant, its directors, men, servants, agents, successors in business, retailers, legal representatives, heirs, assigns or any other person claiming through or under them, from using the mark O2 or any mark similar thereto in respect of their trade, business as part of their trade name/business name/corporate name/domain name, in websites, service mark, spas, health clubs or in any other manner to pass off and/or enabling others to pass off as and for plaintiff’s trade and business under the trademark O2 or in any other manner whatsoever;

(c) the defendant be ordered to pay to the plaintiff, a sum of Rs.1,00,000/- as damages for committing infringement of trademarks and passing off its products as and for the plaintiff’s products or services;

(d) The defendant be ordered to surrender to the plaintiff for destruction, name boards, invoices/bills, prints, dies, blocks, moulds and plates, screen prints, cylinders, packing and advertising material, floppy discs, CDs, DVDs, hard drives and any other material in the defendant’s possession, which bears the trademark O2;

(e) a preliminary decree be passed in favour of the plaintiff directing the defendant to render account of profits made by use of the deceptively similar trademark/trade name O2 amounting to infringement of the plaintiff’s registered trademark and/or passing off and a final decree be passed in favour of the plaintiff for the amount of profits thus found to have been made by the defendant after the latter have rendered accounts; and

(f) for costs of the suit.)

1. The first plaintiff is a registered partnership firm. The second plaintiff is a Company incorporated under the Companies Act 1956. The defendant is also a Company incorporated under the Companies Act, 1956.

2. The suit was originally instituted by the first plaintiff. Subsequently by order dated 02.02.2018 in A.No. 1705 of 2017, the second plaintiff was added as a party to the suit and amendment was carried out by order dated 12.06.2018 in A.No. 1694 of 2018.

3. The suit had been filed seeking a permanent injunction restraining the defendant from infringing with the Trade mark /Trade name /Domain name O2 registered under No. 1574694 in classes 5, 28 and 42 and from passing off as the plaintiffs’ Trade and business, the Trade mark O2 and for damages of Rs.1,00,000/- and for consequential reliefs of surrendering every material bearing the Trade mark O2 and for a preliminary decree for rendering of accounts of profits made by use of the Trade mark / Trade name O2 and for costs of the suit.

4. In the plaint, it had been stated that the first plaintiff had been carrying on business from the year 2001 in the field of gymnastics, aerobics, fitness centers and other related fields under the Trade name O2. The first plaintiff was part of a group of companies and the second plaintiff is also one of the group companies. It is claimed that the Trade mark O2 had been developed as a unique and distinctive Trade mark. The first plaintiff had applied and obtained registration under No. 1574694 in class 5 in respect of “health food in containers” and such other items and in class 28 in respect of “fitness equipments and apparatus” and in class 42 in respect of “services relating to providing of food and drink, restaurant” and related items.

5. In the plaint, it has been claimed that the Trade mark had been duly renewed and also valid and subsisting. The first plaintiff had also applied for registration of the mark O2 Health Studio under No. 1268043 in class 41 with respect to gymnastics, instructions, entertainment, sports campus services, and such other activities. It is stated that the said application is pending registration. However, it is claimed that the first plaintiff was a registered proprietor of the unique and distinctive Trade mark O2 and owing to the registration, was vested with the monopoly to use the said mark to the exclusion of others.

6. Pending the suit owing to an internal arrangement, the first plaintiff assigned the two marks to the second plaintiff including the O2 marks which are the subject matter of this suit by Assignment Deed, Ex.P6, dated 27.02.2017. Very specifically, the Trade mark O2 bearing No. 1574694 dated 02.07.2007 and the Trade mark O2 Health Studio label bearing No. 1268043 dated 19.02.2004 had been assigned to the second plaintiff. It had been further claimed that quite independently the second plaintiff was the registered proprietor of the mark O2 in No. 1903167 for class 5, 24, 41 and 44 which apart from other aspects in class 41 included steam rooms and health spa services. It is also stated that the second plaintiff is also the registered proprietor of the Trade mark O2 Health and Fitness Academy in class 41 which included “Health and Fitness club services” among other activities. In the plaint, it had been further claimed that the plaintiffs’ business in the fitness centre and its gymnasiums and fitness centres under the mark O2 are a noted land mark in the City of Chennai and enjoy reputation and good will for the nature and consistency of the service across the country. It had been stated that there are several such fitness centres and health centres in various parts in City of Chennai. The plaintiffs are also in the process of expanding to other cities including Banglaore and had also advertised their services under the Trade mark / Trade name O2 in various magazines and newspapers having national circulation. It has been further claimed that the first plaintiff had a sales turn over in the year 2010-2011 for a sum of Rs.2,77,05,896/- and during the said period had also expended a sum of Rs.17,31,492/- towards sales promotion. The plaintiffs also have a website www.O2healthstudio.com.

7. It had been further stated that in September 2009, the plaintiffs came to know that the defendant was seeking to misuse the registered Trade mark O2 for services such as spas, which business was identical to that of the plaintiffs. The first plaintiff issued a cease and desist notice on 24.09.2009 calling upon the defendant to cease and desist from infringing the registered Trade mark O2. The first plaintiff issued another notice on 18.12.2009 reiterating the same aspects. A reply was received from the defendant on 09.01.2010. The first plaintiff issued a rejoinder on 25.01.2010 again reiterating its stand and called upon the defendant to cease and desist from using the infringing mark. It was then further stated that the first plaintiff had a bona fide belief that the defendant had stopped using the mark O2. However, in April 2011, the plaintiffs came to know that the defendant had restarted to use identical mark O2 without any authorisation or permission from the plaintiffs. It is claimed that this was in violation of the statutory rights vested to the plaintiffs over the mark O2 owing to its registrtaion. It was further claimed that the defendant has started O2 Healthclub / Spa in the departure lounge in Kamaraj Domestic Airport, Chennai. It was stated that the defendant was also aware of the plaintiffs were vested with the mark O2 for food supplements, gymnastic and fitness equipments in class 42. It was stated that the defendant had deliberately started a Health Club and Spa bearing identical mark O2 in the city of Chennai with sole aim to cause confusion and deception in the trade and among the public and to pass off their services and goods as if they were the services and goods of the plaintiffs. The first plaintiff issued yet another notice on 16.04.2011 for which the defendant had not replied and had also not stopped its infringing activities. It had been stated that the defendant in using the mark O2 which is identical to the registered Trade mark of the plaintiffs in the very same business of Spa and health services which is carried on by the second plaintiff and for which the second plaintiff has a registered Trade mark.

8. It is also claimed that the plaintiffs have been using the services/Trade mark from the year 2001 and therefore, are clearly a prior user of the said mark. The website of the defendant is www.o2spa.org., wherein also the mark O2 had been used. It was specifically stated that the defendant had adopted the usage of the mark O2 with the sole intention of causing confusion in the eyes of the public. It is under these circumstances that the suit had been filed seeking as stated above reliefs of permanent injunction, damages and also costs of the suit.

9. In the written statement filed by the defendant, it had been stated that the defendant, by using the mark “O2 SPA AND SALON” did not infringe any Trade mark of the plaintiffs nor have they passed off their business as if it was that of the plaintiffs. It was also stated that the defendant is not engaged in the provision of goods and/or services for which the plaintiffs had obtained registration under No. 1574694. The plaintiffs had obtained registration in classes 5, 28 and 42. The defendant is in a different business in Spa and Salon. It was also stated that O2 is a chemical compound name for oxygen and is not distinctive mark and is not entitled for protection under the Trade Marks Act. It had been stated that a word which is commonly used and any accepted name of a chemical element or any single chemical compound cannot be registered as a Trade mark. It had been stated that the plaintiffs cannot claim exclusivity to the word O2. It was also stated that the mark of the plaintiffs O2 and O2 Health Studio are barely known in Chennai let alone have a reputation in India and it was therefore specifically stated that the mark is not entitled for protection under Section 29(4) of the Trade Marks Act. It was also stated that it cannot be said that the defendant has used the mark O2 Spa and Salon without due cause and that the defendant is taking unfair advantage of the reputation of the plaintiffs and that such usage is detrimental to the distinctive character or repute of the registered Trade mark.

10. It was stated that the use of the mark O2 by the defendant does not cause confusion in the mind of the public either with relation to the identity of the mark or its identity with the goods or services. The plaintiffs were put to strict proof with respect to the date of commencement of the business. The plaintiffs were also put to strict proof of the averment that they have a reputation and goodwill and that the turn over runs to several crores of rupees. It was very specifically stated that the plaintiffs have not entered into the business of Spa and Salon and consequently cannot claim to be prior user. It was stated that the notices of the plaintiffs had been responded. It was again reiterated that adoption of the mark by the defendant will not cause any confusion in the members of the public, since the class of consumers for the defendant are the elite of the society and well educated people, who can always judge the difference between the services of the defendant and that of the plaintiffs. It was stated that the defendant is using the mark O2 in its original graphic representation and there is no infringement on the mark of the plaintiffs. It was also stated that there has been no document filed by the plaintiffs with relation to representations of the customers of the plaintiffs that they had been confused with the business carried on by the defendant. It was stated that the Spa and Salon of the defendant are located in international Airports around the country and in Five Star Hotels; whereas the plaintiffs have outlets only in Chennai. It was therefore stated that there cannot be any confusion in the minds of any customer. It was also stated that the defendant’s mark is well known and widely recognised among the public and trade as belonging to the defendant. It was also stated that the creation of the website reflects the usage of the mark. It was also stated that the mark is strictly and graphically different and distinguishable as against the mark of the plaintiffs. It was stated that the plaintiff was trying to ride on the goodwill established by the defendant by opening outlets outside Chennai. It was also stated that the annual turn over of the defendant, who has branches across India and USA for exceeds the turn over of the plaintiffs. The defendant had also spent huge amount towards promoting the brand since it is an established brand with branches across the country. It was also stated that since the defendant is using the mark at various locations including Airports, approximately 1.5 lakh people see the mark of the defendant everyday; whereas the number of people exposed to the mark of the plaintiffs is negligible. It was stated that the plaintiffs had no objection for the use of the mark O2 but wanted the defendant to change its logo or use a pre-fix or suffix to the words ‘O2’. It was therefore stated that the relief of injunction is not maintainable. It was also stated that there was no passing off since the marks of the plaintiffs and the defendant are not similar and not deceptively similar. It was also stated that the plaintiffs are not entitled to any damages. It was therefore stated there is no question of deception since the mark of the defendant is a reputed mark with a goodwill. It was therefore stated that the suit should be dismissed.

11. On the basis of the above pleadings, the following issues were framed on 20.10.2016:-

“(i) Whether the plaintiff is entitled for protection of the trade mark under Section 29(4) of the Trade Marks Act, 1999?

(ii) Whether the plaintiff is entitled for permanent injunction as prayed for restraining the defendant from infringing the trademark O2?

(iii) Whether the plaintiff is entitled for permanent injunction restraining the defendant from passing of their products by using the registered trade mark O2?

(iv) Whether the plaintiff is entitled for damages as claimed?

(v) Whether the registered trade mark of the plaintiff is restricted to the goods for which they have obtained the registration?

(vi) Whether the plaintiff is entitled to rendition of accounts?

(vii) Whether the plaintiff had acquiesced in the use of the mark by the defendant?

(viii) To what other reliefs, the plaintiff is entitled to?”

12. The suit was again listed at the instant of the Court on 01.09.2020 after the matter was reserved for Judgment for amendment of the issues under Order 14 Rule 5 CPC.

13. After hearing Mr. Arun C. Mohan, learned counsel for the plaintiffs and Mr.M.K.Kabir, learned Senior Counsel for the defendant, the first issue alone had been amended. The issues were re-cast as follows:-

“(i) Whether the plaintiff is entitled for protection of the trade mark under Section 29(2)(c) and/or 29(4) of the Trade Marks Act, 1999?

(ii) Whether the plaintiff is entitled for permanent injunction as prayed for restraining the defendant from infringing the trademark O2?

(iii) Whether the plaintiff is entitled for permanent injunction restraining the defendant from passing of their products by using the registered trade mark O2?

(iv) Whether the plaintiff is entitled for damages as claimed?

(v) Whether the registered trade mark of the plaintiff is restricted to the goods for which they have obtained the registration?

(vi) Whether the plaintiff is entitled to rendition of accounts?

(vii) Whether the plaintiff had acquiesced in the use of the mark by the defendant?

(viii) To what other reliefs, the plaintiff is entitled to?”

14. The plaintiffs and the defendant were then invited to adduce evidence. On behalf of the plaintiffs, Sambasiva Rao, Chief Financial Officer of the second plaintiff was examined as PW-1. Exs. P-1 to P27 were marked. Ex.P-1 is the authorisation letter to the witness; Ex.P-2 dated 01.04.2005 is the partnership deed of the first plaintiff; Ex.P3 series is the Income tax returns of the first plaintiff for the assessment years 2006-2011; Ex.P4 is the certified copy of the registration certificate of the mark O2 under No. 1574694; Ex.P5 is the registration certificates of the mark O2 under Nos. 1268043 and 1903167; Ex.P6 is the assignment deed by the first plaintiff to the second plaintiff dated 27.02.2017; Ex.P10 series are the sales receipts for the mark O2 from 2001 till the date of producing the documents; Ex.P11 is a brochure / advertisement material; Ex.P12 series are also advertisements; Ex.P13 series are invoices issued by various advertising agencies; Ex.P14 is a certificate by the Chartered Accountant for the sales and promotional figures; Ex.P15 is the printout of the website of the plaintiffs along with the certificate under Section 65B of the Evidence Act; Ex.P16, 17 and 19 are the notices dated 24.09.2009, 18.12.2009 and 25.01.2010 issued by the plaintiffs; Ex.P18 is the reply dated 09.01.2010; Ex.P20 series are the brochure/advertisement material of the defendant; Ex.P21 is the print out of the website of the defendant along with certificate under Section 65B of the Evidence Act; Ex.P22 is the notice issued by the Counsel for the plaintiffs; Ex.P23 is the printout of the facebook page of the defendant; Ex.p26 is the Trade mark application No. 2258284 of the defendant; and Ex.P27 dated 20.07.2016 is the order passed by the Assistant Registrar of Trade marks.

15. During cross examination of PW-1, Exs. D-1 to D7 were marked. Ex. D-1 series are the copies of documents filed with the Registrar of Trade marks for the assessment of the Trade mark O2 in favour of the second plaintiff; Ex.D2 is the copy of the notice to produce documents relating to Trade mark A.No. 1268043; Ex.D3 is the Grounds of opposition filed in the said application; Ex.D4 is the counter statement by the first plaintiff in the said application; Ex.D5 is the copy of a material sent by counsel for the plaintiffs; Ex. D6 are search reports from MCA website for O2 and O2 Spa and Ex.D7 is a copy of the E-mail sent by the counsel for the defendant.

16. On behalf of the defendants three witnesses were examined. DW-1 was Sanjib Roy, Cluster Manager of the defendant. During his evidence, Ex.D8 was marked which is an authorisation letter and during cross, MO1, a compact disk containing the interview of Mr.Ritesh Reddy, Chief Executive Officer of the defendant’s company was marked. The defendant also examined two other witness as stated. Ritesh Reddy, the Managing Director of the first defendant was examined as DW.2 and R.Surendra Babu, Assistant Spa Manager of the defendant was examined as DW.3. DW.2 and DW.3 also tendered evidence in A.No. 7702 of 2017 which is an application filed by the plaintiffs under Order 39 Rule 2A CPC. DW.2 marked Ex.D9 authorisation letter and DW.3 marked Exs. D-10 and D-14. Ex. D10 authorisation letter for DW.3 and Ex.D12 are the print outs of search reports for the mark O2 in classes 1 to 45 and Exs. D13 and D14 are also print outs of registration certificates of the marks O2 in classes 40 to 45 and Ex.D11 is the affidavit filed under Section 65B of the Evidence Act.

17. Heard arguments advanced by Mr.P.S.Raman, learned Senior Counsel for the plaintiffs and Mr.M.K.Kabir, learned Senior Counsel for the defendant.

18. It must also be mentioned that as stated, documents were also marked separately by the plaintiffs in A.No. 7702 of 2017 which is an application filed by the plaintiffs under Order 39 Rule 2A of CPC. However, the evidence of the plaintiffs and defendant overlapped both for the suit and for the application.

19. Written arguments were also filed on behalf of the plaintiffs and the defendants.

20. Mr.P.S.Raman, learned Senior Counsel stated that the first plaintiff had instituted the suit seeking a Judgment and Decree for permanent injunction restraining the defendant from infringing the registered Trade mark which Trade name/Domain name O2 was registered under No. 1574694 in Classes 5, 28 and 42 and also for a permanent injunction restraining the defendant from passing off their business as if it was the business of the plaintiffs and also for damages of Rs.1,00,000/- for committing infringement of the Trade mark and for passing off the business as that of the plaintiff and also for consequential reliefs and for costs.

21. The learned Senior Counsel stated that the mark had been registered by the first plaintiff in Classes 5, 28 and 42. Class 5 related to health foods and health food in containers and such other aspects including nutritional and dietary supplements. Class 28 included gymnastics and sports etc., and Class 42 in respect of services relating to providing food and drink, restaurant, bar, hotel, coffee shop and such other catering trades.

22. The first line of defence taken by the defendant was that they were not in the same business but were in the business of Spas and Salon. It was therefore claimed that the plaintiffs cannot seek any order of injunction for infringement of Trade mark since the defendant was in a different class of business/trade.

23. The learned Senior Counsel pointed out that the learned Single Judge of this Court had examined O.A.Nos. 446 and 447 of 2011 filed in the suit seeking an order of interim injunction restraining the defendant from infringing the Trademark of the first plaintiff and from passing off and by a detailed order dated 10.07.2012, had dismissed O.A.No. 446 of 2011, which was an application seeking interim injunction against infringement of copyright but had allowed O.A.No. 447 of 2011, which was the application seeking injunction from passing off.

24. The learned Senior Counsel pointed out that injunction from infringement was not granted mainly because the Trade mark had been registered for Classes 5, 28 and 42; whereas the defendant was in the business of Spa and Salons. However, the learned Senior Counsel immediately pointed out that the first plaintiff by an arrangement which had been marked as Ex.P6, had assigned to the second plaintiff the registered Trademark O2 bearing No. 1574694 and the registered Trade mark O2 Health Studio label bearing No. 1268043. He further stated that independently the second plaintiff had a registered Trade mark for the word O2 for Classes 5, 25, 41 and 44. Class 5 relates to health foods and nutritional supplements and such other products. Class 25 related to garments and articles of gym and sports clothing. Class 41 related to club, fitness centre and gymnasium services, saunas, steam rooms, Spas and such other services. Class 44 related to health care centre and also included steam rooms and health Spa services. Further, the second plaintiff had a registered Trade mark for the name O2 Health and Fitness Academy under No. 3358584 for Class 41 which included fitness and exercise club services, providing instruction in the field of physical exercise and such other aspects. It was therefore pointed out by the learned Senior Counsel that the reasoning which stood forth while considering the interim applications can be no longer considered since the second plaintiff independently has registrations for the word O2 for Spas and Saloon.

25. In this connection, the learned Senior Counsel pointed out Section 29(2) of the Trade Marks Act 1999 which relates to infringement of a registered Trade mark with respect to both identity with the registered Trademark and identity with the goods or services covered by the registered Trade mark.

26. In the present case, the plaintiffs’ registered Trade mark is O2 and the defendant is carrying on their business under the name O2. The nature of the business is also the same, namely, Spas and Saloon. It was therefore insisted by the learned Senior Counsel, placing reliance on Section 29(3) of the Trade Marks Act 1999 that in a case falling under Section 29(2)(c) of the Trade Marks Act, the Court shall presume that such infringement is likely to cause confusion on the part of the public. The learned Senior Counsel also disputed the claim of the defendant that they have a larger turn over and have branches across the country and therefore, there is no likelihood of confusion in the names of the customers by stating that when the suit was originally moved and injunction granted, the defendant had only one office at Kamaraj Domestic Airport. But subsequent to the grant of order of injunction, they have opened up more than 40 branches across the country in direct violation of the orders of grant of injunction.

27. The learned Senior Counsel further stated that the defendants had filed a series of registration copies with the name O2 by various other companies but stated very fairly, that to the extent possible, a search revealed that none of those registered holders are conducting business in Spas and Saloon. It was therefore stated that the plaintiffs’ registration should be protected. The learned Senior Counsel also pointed out that the documents filed, namely Exs.P7 to P11 established prior usage, continuous usage and also goodwill of the plaintiffs. Ex.P14 gave the sales turn over of the plaintiffs. The learned Senior Counsel also pointed out Ex.P27, an application by the defendant for registration of the word O2 but which registration was abandoned by the defendant. However, the learned Senior Counsel pointed out that the very fact that the defendant had applied for registration would show that the distinctiveness of the mark O2 and the further fact that the defendant had abandoned the registration indicated that they were aware of the possible rejection owing to direct infringement in their usage of the Trade mark O2 owing to the prior registration in the name of the second plaintiff. The learned Senior Counsel also pointed out Ex.D5 which was an E-mail sent by the counsel for the plaintiffs wherein it was stated that the defendant can suffix or prefix the mark O2 and also the undertaking given by the defendant in the affidavit filed in response to the A.No. 7702 of 2017 that they would do so and the defiance of the orders of injunction by not abiding by their own undertaking. The learned Senior Counsel stated that since the plaintiffs have established registration of the Trade mark, continuous usage of the Trademark, prior usage of the Trade mark, established goodwill and reputation and that the defendant was a later entrant the same field of business, the Court should protect the rights of the plaintiffs. The learned Senior Counsel also stated that the contention that the plaintiffs have business only at Chennai cannot be considered since their registration is not limited to the City in Chennai, though geographical limits can be given by the Trade Mark Registry. But since they have not done so, the plaintiffs’ right extended across the length and breadth of the country.

28. The learned Senior Counsel referred to AIR 2017 SC 5619 [Patel Field Marshal Agencies Vs. P.M.Diesels Limited, for the premise that the defendant having not questioned or challenged the validity of the plaintiffs’ registered Trade mark O2 before the competent authority cannot put up a valid defence in Court.

29. The learned Senior Counsel also relied on (2001) 5 SCC 63 Cadila Health Care Ltd., Vs. Cadila Pharmaceuticals Ltd., wherein the Hon’ble Supreme Court had laid down the guideline to determine whether there has been infringement and that such infringement is to be decided by a comparison of the two marks but where the two marks are identical, no further questions can be raised because the infringement is directly made out.

30. The learned Senior Counsel also relied on 2005 (30) PTC 233 (SC) [Dhariwal Industries Ltd., & Another Vs. MSS Food Products], wherein the Hon’ble Supreme Court had held that merely because the defendants may have a much voluminous trade, it would not mean that a big fish can be allowed to swallow a small fish.

31. The learned Senior Counsel also relied on the Division Bench Judgement of this Court reported in 2011 4 CTC 417 [Bluehill Logistics Pvt Ltd., Vs. Ashok Leyland Ltd., and others], wherein the Division Bench had held that the mere fact that the defendants themselves had applied for Trade mark registration would show that the said Trade mark is distinct in nature. In this connection, the learned Senior Counsel pointed out the application made by the defendant for registration of the Trade mark O2 in Ex.P27 and the order of the Assistant Registrar of Trade marks, where it had been ruled that the application has been abandoned.

32. The learned Senior Counsel also relied on 2000 CLC 183 [Indian Shaving Products Ltd., Vs. Gift Pact and another], wherein it had been stated that the mere fact that several other entities are using the Trade mark cannot be a defence since the said entities were not before the Court and the plaintiffs were not seeking any relief as against the said parties. Therefore, the learned Senior Counsel stated that merely because the defendant had produced voluminous documents regarding registrations of the name O2 by various other entities in Exs. D11, D12 and D13 and D14 series, those documents will not be of any help to the defendants. Learned Senior Counsel also specifically stated that none of those registrations related to the business of Spa in which the plaintiffs were now directly involved in. The learned Senior Counsel therefore stated that the plaintiffs have made out a strong case for decreeing the suit and also for grant of injunction both from infringement and from passing off and urged that the suit should be decreed with costs.

33. Mr.M.K.Kabir, learned Senior counsel for the defendant however stated that the relief sought in the plaint was with respect to Trade mark No. 1574694 which had been registered for Classes 28, 42 and 5 which does not cover Spas and Salons and that the Trade mark No. 1903167 in the name of the second plaintiff is not the subject matter of the suit and therefore stated that the plaintiff cannot maintain an order of injunction from infringement. Learned Senior Counsel also stated that there was no prayer for protection from infringement of the mark No.1903167. The learned Senior Counsel also pointed out that the Legal Usage Certificates have been produced by the plaintiffs pending the suit. O2 was not a word mark but only a device. The learned Senior Counsel also pointed out that Section 29(2)(c) will also not be attracted even though the second plaintiff has been added as party to the suit since, the plaintiff is carrying on business in health drink etc., and the defendant is carrying on business in Spas and Salons. It was pointed out that the registration of the mark by the plaintiff was only a device mark.

34. It was also pointed out by the learned Senior Counsel that O2 was only a chemical symbol for oxygen and as a matter of fact, when the plaintiffs’ registration of the mark O2 was objected by another corporate entity, had stated that the mark O2 was used worldwide for different classes of goods. It was stated that the plaintiffs in that application had stated that they only seek registration for the label and not for the word O2. The learned Senior Counsel therefore stated that in the present suit, the plaintiffs cannot take a contrary stand. The learned Senior Counsel also pointed out that the Legal Usage Certificates were introduced during the time of recording of evidence and no application had been made to receive them as additional documents. The learned Senior Counsel stated that the assignment by the first plaintiff in favour of the second plaintiff was done pending the suit and therefore stated that the second plaintiff cannot maintain the suit as against the defendant.

35. With respect to the agreement Ex.P9 series by the first plaintiff with Reebok in 2002, 2004 and 2005, it had been stated by the learned Senior Counsel that O2 Health fitness Studio was a partnership firm and not a Trade mark name and therefore stated that the plaintiffs cannot rely on the said agreement. With respect to the payment receipts Ex.P13 series, the learned Senior Counsel pointed out the documents as filed and stated that among the documents, there were also unsigned payment receipts and wondered how the payment receipts could not have been signed and stated that the said documents have been produced for the sake of the case.

36. It was also pointed out that the Legal User Certificate Ex.P5 series, which have been produced and marked as Exhibits along with the Registration Certificates of the Trade mark, had also been obtained pending the suit and a specific application had not been filed seeking permission to file the said documents. The learned Senior Counsel pointed out that objections had been raised at the time of marking the documents and they have also been noted in the deposition. The learned Senior Counsel pointed out that there was no prayer for infringement of the mark bearing Registration No. 1903167 which relates to Spas and Salons under Class 42. In relation to the income tax returns Ex.P3 series, the learned Senior Counsel pointed out that Form 16A produced relating to O2 Health Studio had a PAN number and wondered how the Trade name can have a PAN number. The Income Tax Statement, under Form No. 3 CD was also referred which was in the name of the first plaintiff and it was specifically pointed out that it was an incomplete document. The name of the plaintiff was shown as the assessee. With respect to the auditor’s certificate Ex.P14, the learned Senior Counsel stated that the certificate had been given with respect to the books of Shyam Investments/ first plaintiff and also of Ruchi Agro Products Pvt. Ltd., and therefore stated that the business O2 Health Studio is inter changeably used by the two entities. A further certificate was also issued in the name of the second plaintiff. The learned Senior Counsel questioned the authenticity of the said certificate and also its relevancy. With respect to the payment receipts, which had been filed as Ex.P10 series, the learned Senior Counsel drew specific reference to some of the receipts wherein there was no signature or the name of the representative of O2 Health Studio. It was therefore stated that the entire receipts cannot be taken into consideration. The service tax number was also referred and it was stated that they related to Ruchi Agro Industries and not to the plaintiffs herein. With respect to the invoices produced as Ex. P13 series, the learned Senior Counsel stated that the invoices were in the name of O2 Health Studio and not in the name of either one of the two plaintiffs. The learned Senior Counsel therefore stated that the plaintiffs cannot maintain the suit for injunction as against the defendant. With respect to the advertisement, which had been filed as Ex.P12 series, and Ex.P11 series relating to brouchers and advertisements, again the learned Senior Counsel stated that the names of the plaintiffs particularly the first plaintiff was not mentioned anywhere in the broucher in Ex.P11. The learned Senior Counsel stated that these documents cannot be the basis to seek any order as against the defendant. The learned Senior Counsel again wondered whether the word mark O2, is a partnership firm or a trade name or a trade mark or a device. Its had been interchangeably use by the plaintiffs and also by Ruchi Agro Foods Limited. Therefore, the learned Senior Counsel stated that the plaintiffs themselves had diluted the distinctiveness of the Trademark. The learned Senior Counsel stated that a Trade name cannot have a PAN number, cannot have a service tax number and cannot have a bank account number. The learned Senior Counsel also pointed out the evidence particularly the cross examination of PW-1 wherein the witness had stated that the mark O2 Health Studio was unregistered as on the date of the suit and the assignment deed wherein also it was so mentioned. The witness also stated that the Legal Usage Certificate had not been filed at the time of institution of the suit. With respect to the injunction for passing off, the learned Senior Counsel stated that the mark should be distinct whereas the word O2 in the present case is not at all distinct. The plaintiffs should establish reputation whereas it had been accepted that the plaintiffs have business only in Chennai. Further, there must be misrepresentation calculated to mislead a purchaser which fact had not been established by the plaintiffs, since no customer had been examined to state that they have been deceived into enjoying the services of the defendant thinking that it was offered by the plaintiffs.

37. The learned Senior Counsel also pointed out that the logo of the defendant and the visual representations of the plaintiffs’ and the defendant’s logo and stated that they are totally distinct from each other and consequently stated there cannot be any confusion in the minds of any customer. Moreover, the defendant has places of business only Airports and Five Star Hotel wherein the customers can never be misled. On the other hand, the plaintiffs have business operation in a limited scale and it was therefore stated that the plaintiffs cannot seek any order of injunction either from infringement or from passing off as against the defendant.

38. The learned Senior Counsel referred to a Judgement of the Division Bench of the Bombay High Court in the case of Shelke Bevarages Pvt Ltd., Vs. Rasiklal Manikchand Dhariwal [ 2010 (4) Mh.L.J], wherein by order dated 29.03.2020 the word oxy was sought to be injuncted. The Division Bench stated that the word oxy or oxygen are used frequently without any reference to the plaintiffs or the product. Therefore, it was held that the plaintiffs thereafter cannot claim monopoly of only a generic term. Reference was also made to a Judgement of the Delhi High Court in 2003 SCC Online Del 240 [K.M. Associates Pvt Ltd Vs. Good times Pvt Limited], wherein the issue was with respect to the word oxygen and the Delhi High Court had held that it was a common word and was not created by either of the parties.

39. Reference was also made to a Judgment of the learned Single Judge of this Court in 2020 SCC Online Mad 1158 [ITC Limited Vs. Nestle India Limited] in order dated 10.06.2020 wherein the learned Single Judge have stated that neither the plaintiffs nor the defendant can claim monopoly over the laudatory words “magic” or “magical” along with the common word “masala” to the exclusion of each another.

40. The learned Senior Counsel also referred to AIR 1955 SC 558 Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd wherein the Hon’ble Supreme Court had held that where a distinctive label is registered as a whole, the proprietor cannot use any particular word or name contained therein apart from the mark as a whole. In this connection, the learned Senior Counsel stated that the mark is O2 Health Studio and the plaintiffs cannot claim exclusive use of the word O2.

41. The learned Senior Counsel also relied on (2018) 2 SCC 1 Toyota Jidosha Kabushiki Kaisha Vs. Prius Auto Industries with respect to guidelines to prove and establish an action of passing off and that three ingredients are required, namely, goodwill, misrepresentation and damages.

42. In the instant case, the learned Senior Counsel stated that none of the said ingredients had been established by the plaintiffs. It was also pointed out that in the assignment deed Ex.P6, the Trade mark had been valued at Rs.1,000/- and stated that by no stretch of imagination can it be stated that the Trade mark of the plaintiffs are valuable or as acquired reputation or goodwill. In view of all these facts, the learned Senior Counsel for the defendant urged that the suit should be dismissed.

43. I have carefully considered the materials on record and the arguments advanced.

Issue Nos.1 & 2:

44. The first plaintiff, Shyam Investments is a registered partnership firm. The second plaintiff Savera Industries Ltd, is a company incorporated under the Companies Act 1956. The defendant Masti Health and Beauty Pvt. Ltd., is also a company registered under the Companies Act 1956. The second plaintiff has been impleaded by order dated 02.02.2018 in A.No. 1705 of 2017.

45. The first plaintiff is carrying on business from the year 2001 in the field of gymnastics, aerobics, fitness centers and other related fields. They have a registered Trade mark O2 under Registration Certificate No. 1574694 in class 28, relating to fitness, equipments and apparatus and in Class 42 relating to services for providing food and drink, restaurant, bar, hotel, coffee and such other facilities and class 5 with respect to nutritional supplements, dietary supplements and related items. The registration had been effected on 02.07.2007 and renewed latest for a period of 10 years from 02.07.2017 and is therefore valid till 02.07.2027. The Trade mark type is device and the word mark is O2. This document has been filed as Ex.P4. The marking of the said document had been objected by the defendant by stating that it a new document had been stitched along with the plaint document. The learned counsel for the plaintiffs had stated that the document marked was a Legal User Certificate of the registration of the mark and therefore it cannot be termed as a new document.

46. The second plaintiff is the registered Proprietor of the Trade mark O2 Health Studio (as a label) in registration No. 1639504 and the Trade mark O2 in registration No. 1903167 under Classes 5, 25, 41 and 44. Very specifically, Class 41 related to steam rooms and Spas and Class 44 also related to steam rooms and health spa services. The marking of these documents, namely, Ex.P5 series was also objected on the ground that the registration certificate No. 1903167, cannot be used for legal proceedings and that the Legal User Certificate had been stitched along with the plaintiffs documents. During cross examination, PW-1 had stated as follows:-

“The certificate for use in legal proceedings was obtained only on 18th July, 2018 for Ex.P4 and in Ex.P5, pages 3 and 4 on 18.07.2018. We have not separately obtained permission from the Court to file the “legal use certificate”. In Ex.P5, under class 44 “beauty salon and health spa services” are mentioned. This certificate relates to the second plaintiff and not the first plaintiff. I do not know whether the documents are filed with the Registrar of Trademark pertaining to the assignment of Trademark O2 in favour of 2nd plaintiff. It may be under process.”

47. It is to be mentioned that the second plaintiff had been impleaded as a party by order of Court dated 02.02.2018 in A.No. 1705 of 2017 because it had been stated that the second plaintiff had acquired rights through assignment over in two Trade marks, namely, Trade mark O2 bearing No. 1574604 dated 02.07.2007 and Trade mark O2 Health Studio label bearing No. 1268043 dated 19.02.2004 from the first plaintiff. It had been noted in the order that the learned Senior Counsel for the defendant had stated that the rights and contentions regarding the assignment by the first plaintiff in favour of the second plaintiff may be left open and that the said application may be allowed. The assignment deed had been marked as Ex.P6. It is dated 27.02.2017. Objections were not raised when the said deed was marked during recording of evidence. During cross examination, the factum of assignment was not questioned but however the value of the assignment was referred. Ex.P6 assignment deed had been entered into between the first plaintiff Shyam Investments represented by its partner A.Nina Reddy and referred to as the Assignor and the second plaintiff Savera Industries Limited, represented by its Managing Director A.Ravikumar Reddy referred to as the assignee. It had been stated that the assignor was the owner of the Trade mark/registration/applications mentioned in the schedule, namely, O2 under registration No. 1574694 and O2 Health Studio label under registration No. 1268043 and that they had transferred and assigned to Savera Industries Limited, the second plaintiff, the said trade marks with goodwill of the business. The consideration fixed was Rs.1,000/-. This consideration was explained by the defendant by stating that the consideration have been so fixed, because the parties belonged to a single group entity. Further as seen from Ex.P5 series, the second plaintiff had an existing registration for the mark O2 very specifically for classes 41 & 42 which included Spa and Salons among other items.

48. The defendant at the time of institution of the suit had commenced business by opening Spas and health centres under the mark O2 in the Airports at Delhi, Mumbai, Chennai, Kolkata and Ahmedabad. On 24.09.2009, by Ex.P16, the plaintiff had caused notice to be issued to the defendant to cease and desist from using O2 Spa as a trading style. A further notice was issued on 18.12.2009 under Ex.P17 once again calling upon the defendant to cease and desist from using O2 Spa as a trading style. The defendant replied to the notice dated 24.09.2009 by reply dated 09.01.2010 which had been marked as Ex.P18 and stated that they are running business in Salon and beauty Spa in Class 42 with the service mark / label O2 Salon and Spa. It was claimed that they were in existence from 2005. It was further stated that since they were running a Salon and beauty spa centre and that the first plaintiff was running a fitness centre and therefore, usage of the Trademark O2 would not amount to infringement. It was further stated that the domain names are totally different. They inturn called upon the plaintiffs to cease and desist from using the name O2 Spa in the course of their trade.

49. A rejoinder was issued on behalf of the plaintiffs on 25.01.2010 which had been marked as Ex.P19 wherein it was reiterated that the adoption of the mark O2 Salon/Spa by the defendant was in blatant imitation of the plaintiffs’ registered Trademark. It was pointed out that the defendant was incorporated only in the year 2008. It was again reiterated that the defendant was infringing the registered Trademark of the first plaintiff. Subsequent to the exchange of notices, the suit was instituted by the first plaintiff, Shyam Investments seeking a Judgment and Decree against the defendant for permanent injunction from infringing the Trade mark / Trade name / Domain name O2 with respect to the Registration No. 1574694 in Classes 5, 28 and 42 and from passing of as the business of the plaintiffs by using the Trade mark O2 and other reliefs including damages and costs.

50. At that particular point of time, the defence raised in the written statement was that the plaintiffs had obtained registration of the marks O2 and O2 Health Studio for an entirely different nature of business and that the defendant was specifically using the mark O2 for their business in Spas and Salons. When O.A.Nos. 446 & 447 of 2011 were argued before the learned Single Judge, which applications were to grant interim injunctions from infringement and from passing off, the learned Single Judge had again noted that the plaintiffs were in the business covered under classes 5, 28 and 42, whereas the defendant was running Spas and Saloons and on that premise stated that injunction against infringement of Trademark cannot be granted. However, recognising that the defendant was actually using the Trade mark O2 and has been deceptively trading in the name of the registered mark of the plaintiffs, the learned Single Judge had granted injunction from passing off by the defendant of their business in the name of O2 as if it was the plaintiffs’ business. That order was passed on 10.07.2012. Thereafter, the defendant herein filed O.S.A.No. 321 of 2012 and the plaintiffs herein filed O.S.A.No. 99 of 2013. Both the Appeals were taken up by the Division Bench for consideration on 10.01.2017. Since issues had already been framed on 20.10.2016, the Division Bench, on the representation of the learned Senior Counsels for both the plaintiffs and the defendant did not enter into any discussion on the merits of the Appeal, but rather adverted them to trial. In effect, the Division Bench dismissed both the Original Side Appeals. The effect of dismissal of O.S.A.No. 321 of 2012 is that the order of the learned Single Judge granting an order of injunction from passing off stood confirmed. The effect of dismissal of O.S.A.No. 99 of 2013 was that the order of the learned Single Judge refusing to grant injunction against infringement of Trademark stood confirmed. However, the first plaintiff, before taking up the opportunity of adducing evidence, entered into an assignment deed on 27.02.2017 immediately after the orders of the Division Bench with the second plaintiff. This assignment deed had been produced as Ex.P-6. As noted, the first plaintiff’s rights in the Trade marks O2 and O2 Health Studio stood transferred to the second plaintiff. Further, the second plaintiff had an existing Trade mark under the name O2 with respect to the business of Spa and Salons. These documents have been produced as evidence by the plaintiffs. They had been objected to by the defendant and the objection had also been noted above. But very significantly, the defendant had not filed any additional written statement questioning the assertion of the second plaintiff that they had a registered mark O2 specifically for the business of Spas and Salons. In the absence of such positive pleadings through a written statement filed by the defendant, cross examination of the plaintiffs’ witness would be of no avail. The defendant must first built on a base with relation to the defence they are taking.

51. Order VII Rule 7 of the Code of Civil Procedure is as follows:-

“7. Relief to be specially stated:-

Every Plaint shall state specifically the relief which the plaintiff claims either simply or in the alternative, and it shall not be necessary to ask for general or other relief which may always be given as the Court may think just to the same extend as if it had been asked for. And the same rule shall apply to any relief claimed by the defendant in his written statement.”

52. It is thus seen that the Court can always grant the relief which it deems to be just in the circumstances of the case even though it had not been asked for.

53. In this connection in (1975) 1 SCC 770, Pasupuleti Venkateswarlu Vs. The Motor & General Traders, the Hon’ble Supreme Court of India had laid down as follows:-

“4. .......... First about the jurisdiction and propriety vis-a-vis circumstances which come into being subsequent to the commencement of the proceedings. It is basic to our processual jurisprudence that the right to relief must be judged to exist as on the date a suitor institutes the legal proceeding. Equally clear is the principle that procedure is the handmaid and not the mistress of the judicial process. If a fact, arising after the lis has come to court and has a fundamental impact on the right to relief or the manner of moulding it, is brought diligently to the notice of the tribunal, it cannot blink at it or be blind to events which stultify or render inept the decretal remedy. Equity justifies bending the rules of procedure, where no specific provision or fairplay is violated, with a view to promote substantial justice — subject, of course, to the absence of other disentitling factors or just circumstances. Nor can we contemplate any limitation on this power to take note of updated facts to confine it to the trial court. If the litigation pends, the power exists, absent other special circumstances repelling resort to that course in law or justice. Rulings on this point are legion, even as situations for applications of this equitable rule are myriad. We affirm the proposition that for making the right or remedy claimed by the party just and meaningful as also legally and factually in accord with the current realities, the Court can, and in many cases must, take cautious cognisance of events and developments subsequent to the institution of the proceeding provided the rules of fairness to both sides are scrupulously obeyed.......”

54. In the instant case, the focus had shifted from a consideration under Section 29(4) of the Trade Marks Act 1999 to that of a consideration under Section 29(2) of the Trade Marks Act 1999. The essential difference between the two provisions is that under Section 29(2), the plaintiffs can seek an injunction with respect to every same Trademark being used by the defendant for the very same business/trade. However, under Section 29(4), the plaintiffs can seek an injunction restraining the defendant from using the very same Trademark with relation to a different class of the business. When that provision was urged by the plaintiffs then naturally the plaintiffs will have to establish reputation of their Trade mark. This necessity to establish reputation wafers down in the case of seeking of protection under Section 29(2) of the Trade Marks Act since under Section 29(3) of the Act, it had been stated that the Court shall presume likelihood of confusion being caused.

55. Section 29 (2) (3) and (4) of the Trade Marks Act, 1999 are extracted below for ready reference:-

“29. Infringement of registered trade marks.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public.

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”

56. Section 29(2)(c) of the Trademarks Act stipulates that when the defendant uses the very same Trademark for the very same nature of business then the plaintiffs can seek protection from infringement and under Section 29(3) of the Trade Marks Act, the Court shall presume that there has been likelihood of confusion.

57. In this connection, the evidence of the defendant can be examined. This Court must place its deepest condemnation at the answers given by DW-1 Sanjib Roy, who claimed to be a Cluster Manager of the defendant. He did not answer any of the questions put during cross examination. The extracts are given below:-

“Q: In how many outlets are you currently using the mark O2?

A: I have to verify the actual number of outlets.

Q: Are you able to recollect approximately the number of outlets in India?

A: Approximately 90 Plus.

Q: How many outlets have you open since August 2012?

A: I have to verify

Q: Would you approximately recollect how may outlets you have opened since 2012?

A: I Cannot.

Q: On what documentary basis have you stated in the paragraph 10 of your proof affidavit, that the defendants started the business in 2005?

A: I studied the case and based on the case papers i understood the same.

Q: Apart from case pleadings, can I take it that you did not see any document to come to the conclusion of the defendant’s commencement of business in 2005?

A: I have to check about it.

Q: Did you inform your investors that you have been retrained by this Hon’ble Court from using the mark O2 with any suffix including Spa and Salon?

A: I have to check.

Q: Have you informed Airport operators of the orders of this Hon’ble Court dated 10.07.2012 in relation to the operation of your business in their airport?

A: I have to check

Q: Are you personally aware, if the order of this Hon’ble Court dated 10.07.2012 has been tabled before the Board of the defendant’s company for recording and taking appropriate action?

A: I am personally not aware and I have to check.

Q: Are you personally aware if the defendant has inform the Registrar of Companies of the order of this Hon’ble Court dated 10.07.2012 when you changed the company name from Masti Health and Beauty Pvt. Ltd., to O2 Spa Salon Pvt. Ltd.?

A: I have no idea personally and I have to check up.

Q: Are you aware that you have filed for the trade mark O2 before the Trade Mark Registry, Chennai?

A: No. I am not aware. I will have to verify.”

58. This cross examination was on 16.04.2019. The next cross examination took place on 25.04.2019. The answers to the very first question were as follows:-

“Q: Did you check how many outlets you have operated since 2012 under the mark O2?

A: No I have to check

Q: Have you checked whether you have inform your investor and Airport operators of this Court dated 10.07.2012?

A: No. I have to check

Q: Have you checked whether this Court order dated 10.07.2012 has been tabled before the Company’s Board?

A: No. I have to check.

Q: Have you checked at all in any of the answers given by you in which you had stated that you would check as per you last deposition dated 16.04.2019?

A: No. I haven’t got the time.”

59. The witness who represents the defendant and who had been authorised to tender evidence stated that he did not have time to give information to the Court. This shows not just a callous attitude by the defendant but a defiant attitude.

60. The further cross examination was as follows:-

“Q: What are your average annual sales?

A: Approximately annual turn over is about 100 crores.

Q: Are you aware that your company had represented before this Hon’ble Court that you would be changing your name from O2 to OXY2?

A: I am not aware

Q: Have you changed any of your outlet’s name to OXY2?

A: I have no idea.

Q: Please see your company’s trade mark application No. 2258284 for O2SPA. Have you disclosed in your proof affidavit that you have abandoned the same?

A: I have no idea about it.

Q: Are you aware that your company has filed Trade Mark application for the mark “O2SPA”?

A: I am not aware.

Q: I put it to you that you have deliberately suppressed that your company has abandoned its Trade Mark Application No. 2258284 for “O2SPA”?

A: I deny.

Q: Please see the Trade Mark application No. 2258284. Has this been filed by your company?

A: I cannot say this.

Q: Are you aware if your company has a Facebook page?

A: Yes.

Q: Please see this Facebook page and confirm if it is your company’s Facebook page? (Witness shown one website)

A: This was I cannot confirm.

Q: Please see the URL of this Website. Would this URL direct you to the FaceBook page of the Defendant?

A: I am not sure.

Q: Can you access this on your mobile?

A: No, I cannot.

Q: I put it to you that you have indulged in acts of contempt, misleading this Hon’ble Court, material suppression and prejury?

A: I deny.

Q: I put if to you that the plaintiff’s and defendant’s services are allied and cognate?

A: I deny.

Q: Have you taken any steps to challenge the Trademark registration of the plaintiffs/

A: I am no aware.”

61. Not just the extract above, but the entire evidence reveals that the defendant had no regard for the sanctity of the judicial proceedings.

62. DW.2 Ritesh Reddy Mastipuram was examined primarily in A.No. 7702 of 2017. In his proof affidavit, he also traversed through the averments of the plaintiffs and the defendant. It has to be noted that in the proof affidavit, DW.2 had not denied that the second plaintiff had been running the business Spa and Salon under the Trade mark O2. The learned Senior Counsel for the defendant pointed out that the suit had been laid only for infringement of the Trademark O2 registered under No. 1574694 in classes 5, 28 and 42 and that the registration certificate of the Mark O2 under Nos. 1268043 and 1903167 which related to Spas was not the subject matter of the suit. However, in the order permitting the second plaintiff to be joined as a party to the lis, it had been noted that the second plaintiff has a registration O2 for Spas and Salons and thereafter the application was allowed. When the defendant themselves have not filed any additional written statement, questioning this fact, it will not lie in their mouth to assert that the plaintiffs’ cannot lay their suit on those registration certificates. At any rate, as stated by the Hon’ble Supreme Court in Pasupuleti Venkateswarlu, referred Supra, “If a fact, arising after the lis has come to court and has a fundamental impact on the right to relief or the manner of moulding it, is brought diligently to the notice of the tribunal, it cannot blink at it or be blind to events which stultify or render inept the decretal remedy.

63. In this case, it was very essential for the defendant to have filed an additional written statement questioning the locus of the second plaintiff in maintaining the suit. They have not done so. The pleadings had been amended wherein it had been very specifically stated that the second plaintiff was a registered proprietor of the marks O2 and O2 Health and Fitness Academy for classes 5, 25, 41 and 44 and class 41 respectively and class 41 included steam rooms and Spas and class 44 included Health Spa Services. There can be no doubt the Trade mark O2 can be pronounced in only one way. Both the marks of the plaintiffs and the defendant are phonetically exactly the same.

64. The learned Senior Counsel for the defendant pointed out that the manner in which the mark of the defendant had been written is entirely different. But the Act also provides for injunction with respect to similarity in the manner in which it is phonetically expressed.

65. In the instant case, one further fact which has to be pointed out is that the defendant themselves had applied for the mark O2 but had abandoned the same for the reasons best known to them. Documents in this regard had also been filed by the plaintiffs. Ex.P26 is the Trademark Application No. 2258284 of the defendant, in which, it had been noted that the same had been abandoned by correspondence date 29.03.2016. In this connection, a reference can be made to the Judgment of the Division Bench of this Court reported in 2011 (4) CTC 417 [Blue Hill Logistics Pvt. Ltd., Vs. Ashok Leyland Ltd., and Ors.] wherein the Division Bench had held that when the defendant had applied for registration of Trademark claiming exclusive right over the expression cannot thereafter claim it to be generic. This assumes significantly since the focus of the documents of the learned Senior Counsel is that the Trade mark O2 is a reduced form for Oxygen and therefore is a common name known mark and the plaintiffs cannot use it and claim exclusively over its usage. However, the defendant had not given any explanation as to why they had abandoned their application for registration of the mark O2.

66. The witnesses for the defendant in their proof affidavits had repeatedly stated that the defendants have established branches across the country and that the plaintiffs have a business primarily concentrated at Chennai. But as correctly pointed out by the learned Senior Counsel for the plaintiffs, the registration of the mark O2 and O2 Health Studio is not geographically restricted to the City of Chennai. The Registrar could have done so. But had not. Therefore, the plaintiffs have a right to question the usage of the mark O2 by the defendants at any place within the Country.

67. The contention of the learned Senior Counsel for the defendant relating to the documents pertaining to income tax returns/invoices/advertisements cannot be accepted since these documents have been produced only as relevant to the fact in issue. It has to be kept in mind that the evidence has to be appreciated only by preponderance of probabilities. The fact in issue in this case is whether the plaintiffs have a registration of the mark O2 and whether the defendant are the mark O2 for their Trade name and whether there is identity in the nature of business. It has been established so. Then the issue narrows down to Section 29(3) of the Act wherein the legislature had stated that the Court shall presume the usage by the defendant will cause confusion in the minds of the general public.

68. A reference was made by the learned Senior Counsel for the defendant to the Judgment of a learned Single Judge of this Court in 2020 SCC Online Mad 1158 [ITC Limited Vs. Nestle India Limited]. The Judgment is now the subject matter of an Appeal by the Division Bench. The reference to the Judgment in 2003 SCC Online Del 240 [K.M. Associates Pvt Ltd Vs. Good times Pvt Limited], wherein a learned Single Judge of the Delhi High Court held that the word oxy was a common word cannot be disputed but in so far as business of the plaintiffs is concerned namely Spa and Salon O2 is an arbitrary word. There may be a generation of energy thereby implying fresher flow of oxygen into the body by infusing more energy but to coin a trade name O2 with respect to the entire gambit of services provided shows that it is an arbitrary mark and therefore it has to be protected. It is also on evidence that the plaintiffs are the prior user and if that be the case, the defendant will have to explain their honest usage. They have not done so. On the other hand, the witness for the defendant refused to answer any question. On that refusal itself, the defendant will have to suffer an order from this Court.

69. In view of these facts, I hold that the plaintiffs in view of the registration of the mark O2 for classes 41 and 44 which has not been disputed by the defendant have to be protected from infringement and as Section 29(3) stated that in any case falling under clause (c) of sub-section (2), the Court shall presume that there is likelihood to cause confusion on the part of the public, this Court does presume that usage of the mark O2 by the defendant will indeed cause confusion on the part of the public and accordingly with respect to Issue Nos.1 and 2, I hold that the plaintiffs are entitled for protection of the Trade mark O2 under Section 29(2)(c) read with Section 29(3) of the Trade Marks Act 1999 and for permanent injunction restraining the defendant from infringing the trade mark O2. The Issue Nos. 1 and 2 are answered in favour of the plaintiffs.

Issue No.3:

70. This issue relates to protection from passing off by the defendant of their business by using the registered Trademark O2. It had been held that the second plaintiff has a registered Trademark O2 for the specific business Spas and Salons. The defendant is also having the business of Spa and Salon with the Trademark O2. Even when the interim applications were decided on 10.07.2012, the learned Single Judge had granted injunction against the defendant from passing off their business as if they are the business of the plaintiffs. The Appeal against the same had been dismissed and the order had become absolute. Irrespective of the above, a reference can be made to Section 27(2) of the Trade Marks Act 1999:-

“27. No action for infringement of unregistered trade mark.

(1) .........

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.”

71. This provision recognised the common law rights of the Trade mark owner to take action against any person for passing off their goods/services as the goods/services of the registered proprietar. It is independent of the infringement action.

72. In (2001) 5 SCC 63 Cadila Health Care Ltd., Vs. Cadila Pharmaceuticals Ltd., it had been held as follows:-

“42. 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.

43. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.”

73. In the instant case, the nature of marks for the plaintiffs and the defendant are the same, namely, O2. They are phonetically the same. The nature of services in which they are used is also the same, namely Spa and Salons. The similarity in the nature and the character and purpose of the service is also the same because both the plaintiffs and the defendant give the same service, namely, providing Spa and Salons services. The class of customers are also the same, namely, anybody who requires and who prefers special attention to be given to the grooming of their body and physical health.

74. The contention of the defendant that they draw elite customers has to be rejected since there cannot be any classification among customers, who opt to go to Spas and Salons as being elite and non-elite. They are customers, who can afford the payment charged. They are customers, who are keen to avail the benefits of Spas and Salons. They can be anybody. It is beyond imagination to consider that the person who goes to a Spa and Salon service to the defendant can be considered as elite and the person who go to the plaintiffs for similar services is non-elite. This distinction drawn by the defendant has to be condemned and is straight away rejected.

75. In Gangotree Sweets and Snacks Pvt. Ltd., Vs. Shree Gangotree Sweets reported in 2005(31) PTC 502 (Mad), a Division Bench of this Court had held as follows:-

“The applicant-plaintiff having acquired a statutory right, by virtue of its registered trade mark is certainly entitled to seek for its protection of its infringement in any form. Equally its rights as against any body’s attempt to even pass off such goods also entitled to be protected. When according to the applicant-plaintiff, it is the user of word “Gangotree” right from the year 1990, it is entitled to claim that such user has created a presumptive right in its favour under Section 31 of the Trade Marks Act and consequently, the whole burden would shift on the respondent-defendant to dislodge that presumption which may even be available to the respondent-defendant by approaching the appropriate Forum by invoking the provisions contained in Chapter VII of the Trade Marks Act, 1999. Until such remedies are invoked in a successful manner, it will have to be held that infringement of the trade mark of the applicant-plaintiff in any manner and the action of passing off indulged in by the respondent-defendant in the form in which it is alleged and shown as on date would entitle the applicant-plaintiff to seek for injunction as prayed for.”

76. It is also to be noted that credible evidence had been produced by the plaintiffs that they have been in business much prior to the defendant. As a matter of fact, the defendant had never given any specific date of which they had commenced their business under the tradename O2. They have only questioned the claim of the plaintiffs that they have been in business from 2001 but on the other hand, they have not let in any evidence to show the date on which they had commenced their operations. It is stated in the reply notice Ex.P18 that the defendant has come into existence in the year 2005 and that they had applied for registration in the year 2009. However, a copy of the said application for Registry had also been filed as a document and for reasons best known to them, they had abandoned the same.

77. In view of all these facts and also because of the fact that the order granting injunction from passing of has become absolute owing to the fact that the Appeal filed against the same had been dismissed, I hold that the plaintiffs are entitled for the relief of injunction from passing off. There has been a very specific finding in the order dated 10.07.2012 by the learned Single Judge in O.A.Nos. 446 and 447 of 2011 that there is no doubt that the plaintiffs were prior user of the Trademark O2 as well as the mark O2 Health Studio and that the defendant was a subsequent user and that the usage of the mark O2 by the defendant amounted to passing off their services as similar to that of the plaintiffs. This finding holds good even after evidence had been recorded and no positive evidence had been let in by the defendant to dislodge such a finding. Therefore, I answer Issue No.3 in favour of the plaintiffs.

Issue No.4:

78. The plaintiffs have had the benefit of an order of injunction restraining the defendant from passing off their services as if they are the service of the plaintiffs from 10.07.2012 when the interim order granted was made absolute. However, till this date, the defendant has been using the mark O2 in complete defiance of the order of injunction. They have also opened several branches across the country under the very same name O2 even though they have been specifically injuncted from passing off their services by using the mark O2. DW-1 during his cross examination which have been extracted above had stated that he has to check whether the order dated 10.07.2012 had been informed to the Airport operators. He also stated that he is not personally aware and has to check whether the order dated 10.07.2012 was tabled before the Board of Directors of the defendant’s company. He also stated that he has n

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o idea personally and will have to check up whether the order has been informed to the Registrar of Companies when the name of the Company was changed from Masti Health and Beauty Pvt Ltd., to O2 Spa and Salon Pvt Ltd. He refused to give the number of outlets which have been opened since 2012. However, he stated that there are approximately 90 + outlets as on the date of his cross examination in April 2019. DW-2, the Managing Director stated as follows with respect to the number of outlets which the defendant had in the year 2012 and how many were opened after 2012. “Q: How may O2 outlets did you have in 2012? A: I do not remember. Witness adds: May be around 25. Q: How many O2 outlets have you opened after 2012? A: More than 50. Q: How many O2 outlets do you presently have? A: More than 70.” 79. It is thus seen that the plaintiffs have suffered continuous damages owing to the deliberate violation of the orders of injunction by the defendant. The plaintiffs have been the original user of the mark O2 and usage by the defendant whether in violation or otherwise of the orders of this Court has caused damage to the business of the plaintiffs. 80. The contention of the learned Senior Counsel for the defendant that the plaintiffs had themselves stated in their justification for registration of the mark O2 when registration was opposed by a third party entity that the mark O2 is a commonly used word, cannot be taken into consideration in this case because here the defendant are in the same business Spa and Salons and therefore usage of the mark O2 by the defendant had certainly diluted the value of the mark of the plaintiffs. 81. In view of these reasons, I hold that the plaintiffs are entitled for damages as sought for and as quantified under the plaint as Rs.1,00,000/-. This issue is answered in favour of the plaintiffs. Issue No.5: 82. This issue pales into insignificance owing to the second plaintiff being included as a party to the suit. The first plaintiff had assigned their rights over the Trademark O2 bearing No. 1574694 and Trade mark O2 Health Studio Label bearing No. 1268043 by way of an Assignment Deed dated 27.02.2017 to the second plaintiff and independently the second plaintiff is the owner of the Trade mark No. 1903167 for the mark O2 which also included class 41 and class 44 among which are steam rooms and Spas and steam rooms and Health Spa services. The second plaintiff also had a registration in No. 3358584 for O2 Health and Fitness Academy for class 41. In view of the said registrations which are subsisting, I hold that the issue whether the registration of the Trade mark of the plaintiffs is restricted for the goods for which they have obtained registration has become obsolete. But, at any rate, it is a fact that the Trademark is restricted only for the class of goods/services for which the mark has been registered. The issue is answered accordingly. Issue No. 6: 83. The plaintiffs are a registered proprietor of the mark O2 specifically for providing Spa and Salon services. The defendant had also been using the mark O2 for providing Spa and Salon services inspite of injunction granted by this Court. The defendant, in their own words, cater to “elite of the society and well educated people”. They are located in International Airports as well in Five Star Hotel and Malls. These are specifically spoken by DW-1 in his proof affidavit. Further, during his cross examination, DW-1 had stated as follows:- “Q: What are your average annual sales? A: Approximately annual turn over is about 100 crores.” 84. DW.2 in his cross examination which had been extracted above had stated that he had been more than 50 outlets have been opened after 2012, namely, after the order of injunction and that there are as many as 70 outlets as on the date of his cross examination. During his cross examination, he stated as follows:- “Q: What is your present yearly turnover under the brand O2? A: More than 50 crores.” 85. He further stated as follows:- “Q: Do you believe, your O2 brand is valuable? A: Yes.” 86. The above answers by the defendant’s witnesses themselves clearly shows that they have benefitted substantially by infringing on the Trademark of the plaintiffs by passing off their services as if they are services offered by the plaintiffs. I therefore hold that the plaintiffs are entitled for a direction against the defendant for rendition of accounts. Accordingly, a preliminary decree is also passed directing the defendant to render accounts of the profits made by use of the mark O2 from the date of institution of the suit till this date. The account should be rendered within a period of three months from this date and the plaintiff is entitled to file an application for Final Decree to claim the amount of profits thus declared to have been made by the defendant. The issue is therefore answered in favour of the plaintiffs. Issue No.7: 87. The plaintiffs, after coming to know of the infringement of their mark had issued a notice through their counsel on 24.09.2009 in Ex,P16. They issued a second notice on 18.12.2009 in Ex.P17. This was replied by the defendant by Ex.P18 dated 09.01.2010. A further rejoinder was issued by the plaintiffs on 25.01.2010. The suit had thereafter been filed on 28.04.2011. However, this issue had been raised by the defendant even while arguing O.A.Nos. 446 and 447 of 2011 wherein by order dated 10.07.2012, it had been very specifically held that delay cannot be a ground for a refusal of grant of injunction and that the plaintiffs had approached the Court immediately after the issuance of the cease and desist notice. 88. In (2004) 3 SCC 90 [Midas Hygiene Industries Pvt Ltd., and Ors Vs. Sudhir Bhatia and Ors., the Hon’ble Supreme Court had stated as follows:- “5. The law on the subject is well settled. In cases of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark was itself dishonest.” 89. Here it has been categorically held and found that the defendant has violated the orders of injunction of the Court and that the plaintiffs are entitled for an injunction from infringement of Trade mark and also from passing off. Therefore, I hold that in accordance with the principle laid above that the plaintiffs cannot be non suited on the ground of delay and that there is no delay in filing of the case. Therefore, it cannot be stated that the plaintiffs had acquiesced in the use of the mark by the defendant. The plaintiffs have been in litigation right from the time when the suit was instituted and had also impleaded the second plaintiff to show bona fide because the second plaintiff had a registered Trade mark O2 for class 41 which specifically related to Salon and Spas. The plaintiffs have also independently filed A.No. 7702 of 2017 under Order 39 Rule 2A CPC for punishment of the defendant for violation of orders of injunction. The plaintiffs have initiated such legal proceedings and therefore, by no stretch of imagination, can it be stated that they have acquiesced in the use of the mark by the defendant. This issue is answered in favour of the plaintiffs holding that the plaintiffs have not acquiesced in the use of the mark by the defendant. Issue No.8: 90. I hold that the defendant must also be directed to surrender to the plaintiffs all materials which bear the trademark O2. 91. In view of the above discussions and the findings, I hold that the suit is decreed as prayed for with costs. 92. The plaintiffs are entitled for costs of the suit in accordance with the amended Section 35 of the Code of Civil Procedure. 93. The Registry is delegated and directed by this Court to determine the costs and the plaintiffs are permitted to file their Bill of Costs relating to (1) fees and expenses of the witnesses; (2) legal fees and expenses; and (3) any other expenses incurred in connection with the proceedings. 94. On the filing of the Bill of Costs, the Registry may determine the quantum of the costs. 95. In the result, the suit is decreed with costs.
O R







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09-09-2020 R. Bharaneeswaran Versus The Government of Tamil Nadu, Rep. by its Secretary, School Education Department, Chennai & Others High Court of Judicature at Madras
08-09-2020 The State of Tamil Nadu, Rep. by the Collector of the Nilgiris, Udhagamandalam Versus Janaki High Court of Judicature at Madras
08-09-2020 Jai Bharath College of Management & Engineering Technology, Rep. by Its Chairman, Ernakulam & Others Versus The State of Kerala, Rep. by Its Secretary to Government, Higher Education Department, Trivandrum & Others High Court of Kerala
08-09-2020 S. Jagannatha Rao Versus Air India Limited, Rep. by its Chairman and Managing Director, New Delhi & Others High Court of Judicature at Madras
07-09-2020 Sir Venkatramanaswamy Blue Metals, Rep by its Managing Partner, M. Sivanandam & Another Versus The Assistant Commissioner, Karur & Others High Court of Judicature at Madras
07-09-2020 The Tamil Nadu Public Service Commission Rep. by its Secretary, Chennai Versus P. Muthian High Court of Judicature at Madras
04-09-2020 Y. Devadas Versus State of Telangana, Rep., by Special Chief Secretary, Education Dept., Government of Telangana & Another High Court of for the State of Telangana
04-09-2020 K. Ebnezer Versus The State of Telangana, rep by its Principal Secretary to Government, Home Department, Secretariat, Hyderabad & Others High Court of for the State of Telangana
04-09-2020 Saluvadi Sumalatha Versus The Telangana Residential Educational Institutions Recruitment Board (TREI-RB) rep., by its, Executive Officer (Convenor) & Another High Court of for the State of Telangana
04-09-2020 Alfadul Sobhi & Another Versus State of Karnataka, Rep. by its State Public Prosecutor, Bengaluru High Court of Karnataka
04-09-2020 Natarajan Versus The State of Tamil Nadu, Rep by its Secretary to Govt. Dept. of Municipal Admin & Water Supply, City V, Chennai & Others High Court of Judicature at Madras
04-09-2020 K. Ravi Versus The Government of Tamil Nadu, Rep. by its Secretary, Department of Labour & Employment, Chennai & Others High Court of Judicature at Madras
03-09-2020 B. Rajesh & Another Versus Union of India, Rep. by its Ministry of Corporate Affairs, New Delhi & Others High Court of Judicature at Madras
03-09-2020 Tamil Nadu Uniformed Services Recruitment Board, Rep. by its Member Secretary, Chennai. Another Versus S. Manikandan High Court of Judicature at Madras
03-09-2020 Kothapalli Govinda Rajulu Versus The State of Andhra Pradesh, Rep. by its Principal Secretary, Endowment Department, Secretariat, Velagapudi & Others High Court of Andhra Pradesh
03-09-2020 M/s. Khushee Construction through its Power of Attorney Holder, Patna Versus The State of Bihar through the Secretary, Public Health Engineering Department, Govt. of Bihar, Patna & Others High Court of Judicature at Patna
03-09-2020 Taba Tagar Versus The State of Arunachal Pradesh Rep. By Its Chief Secretary to the Govt. of Arunachal Pradesh Itanagar, Arunachal Pradesh & Others High Court of Gauhati
03-09-2020 Meharaj @ Meharaj Begum Versus State by K.G. Halli P.S., Rep. by Government Pleader High Court of Karnataka
03-09-2020 F. Srilekha & Another Versus State of Karnataka, Rep. by S.P.P., Bengaluru High Court of Karnataka
03-09-2020 Yedla Babulu & Others Versus State of Telangana rep. by its Principal Secretary, Revenue Department (J.A & L.A), T.S. Secretariat Buildings, Hyderabad & Others High Court of for the State of Telangana
03-09-2020 M. Ravi & Others Versus State by Vishwanathapura P.S., Rep. by SPP, Bengaluru & Another High Court of Karnataka
02-09-2020 G.C. Kishor Kumar Versus Karnataka State Handicrafts Development Corporation Ltd., Rep. by its Managing Director, Bengaluru & Others High Court of Karnataka
02-09-2020 All India Union Bank Officer, Staff Association Rep. by its General Secretary, AIBOA, Chennai Versus Brajeshwar Sharma, The Chief General Manager(HR) Union Bank of India, Mumbai High Court of Judicature at Madras
02-09-2020 Philip Stephen Versus The State of Karnataka, Rep. by its Principal Secretary Revenue Department, Bangalore & Others High Court of Karnataka
01-09-2020 M/s Elgi Equipments Ltd., Rep.by its company Secretary, S. Raveendar, Coimbatore Versus M/s Kurichi New Town Development Authority Rep.by its Member Secretary, Kurichi, Coimbatore & Another High Court of Judicature at Madras
01-09-2020 M/s. United India Insurance Co. Ltd., Rep. By its Divisional Manager, Arani Versus Raja & Others High Court of Judicature at Madras
01-09-2020 Pavai Varam Educational Trust Established and Administering, Paavai College of Pharmacy and Research, Rep. by Chairman V. Natarajan Versus The Pharmacy Council of India, Represented by the Secretary cum Registrar, New Delhi High Court of Judicature at Madras
01-09-2020 Vazhuvoor Ravi Versus The State of TamilNadu, Rep.by the Chief Secretary, Chennai & Others High Court of Judicature at Madras
31-08-2020 M/s. Kaveri Associates, Rep. by its Managing Partner, Rishabchand Bhansali Versus The Assistant Commissioner of Income Tax Circle 5(1), Bangalore High Court of Karnataka
31-08-2020 M/s. AAF India Private Limited, Rep. by its Authorised Signatory Jagruti Mursenia Versus M/s. KBR Industries, Represented by its Partner High Court of Karnataka
28-08-2020 M/s. Anish Orchardes Private Ltd. Rep. by its Director S. Bhavani & Others Versus The Official Liquidator, High Court, Madras as Provisional Liquidator of Maxworth Orchards (India) Ltd. Orchards (India) Ltd. Rep. by Administrator K. Alagiriswami & Others High Court of Judicature at Madras
28-08-2020 K.V. Sayan & Another Versus The State rep. By Inspector of Police, Kotagiri Police Station, The Nilgiris & Another High Court of Judicature at Madras
28-08-2020 Chandan @ Abcd Chandan Versus State of Karnataka, Rep. by the State Public Prosecutor, Benglauru High Court of Karnataka
28-08-2020 M/s Urban Systems Versus The Union of India Rep. By The Secretary To The Govt of India, Min of Finance, Deptt of Revenue Central Board of Indirect Taxes And Customs, North Block, New Delhi & Others High Court of Gauhati
28-08-2020 Karnataka Professional Colleges Foundation Rep. by its Secretary R.V. Govinda Rao & Others Versus State of Karnataka, Represented by its Principal Secretary & Others High Court of Karnataka
28-08-2020 Dr. Samjaison Versus The Deputy Director of Health Services, Ramanathapuram & Others Before the Madurai Bench of Madras High Court
28-08-2020 Ponnayal & Others Versus The State of Tamil Nadu, Rep.by the Additional Chief Secretary, Highways & Minor Ports Department, Chennai & Others High Court of Judicature at Madras
28-08-2020 Mahindra Lifespace Developers Ltd., Rep.by its Authorized Signatory R. Eswaran Versus The Chairman and Managing Director, TANGEDCO, Chennai & Others High Court of Judicature at Madras
28-08-2020 Shifa Khairun Versus The Government of Tamil Nadu, Rep.by its Secretary to the Government, Health & Family Welfare Department, Chennai & Others High Court of Judicature at Madras
27-08-2020 Phatik Sonowal Versus State Of Assam Rep. By The Comm. & Secy. To The Govt. of Assam, Education (Elementary), Gauhati & Others High Court of Gauhati
27-08-2020 Poornachandrakala Versus The State of Tamil Nadu, Rep. by its Secretary to Government, Department of Collegiate Education, Chennai & Others Before the Madurai Bench of Madras High Court