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Judgment
M. Jeyapaul, J.—Seeking interim injunction restraining the respondents and their agents fusing the copy right, using the trade mark and doing
the act of passing off, the aforesaid O.A.Nos. 145, 146 and 147 of 2007 have been respectively filed. This Court was pleased to grant ad-interim
injunction in absentia . of the respondents in respect of the aforesaid reliefs. The respondents have filed Application Nos. 1960, 1962 and 1964 of
2007 seeking to vacate the aforesaid ex parte order of ad-interim injunction in favour of the applicants. A.Nos.1961, 1963 and 1965 of 2007
have been filed seeking to suspend the ex parte order of interim injunction granted in favour of the applicants.
For the sake of brevity and also to avoid confusion in referring to the respective parties, the plaintiffs are referred as applicants and the
defendants are referred as respondents.
The sum and substance of the case of the applicants is as follows:
The first applicant is the Managing Director of the second applicant Company and the Joint Proprietor of the trade mark ''UDHAIYAM"". The
applicants are the traders of all types of food and allied products such as Dhall, Atta, Rava, Maida, Salt. Rice, Spices, Fried gram, Appalam, Idly
batter etc. The applicant''s goods are sold under the trade mark ""UDHAIYAM"". The trade mark was originally commenced by the first applicant''s
ancestors during the year 1940. It has been registered under No. 595393B dated 24.3.1993. The trade mark of the applicant consists of the name
''UDHAIYAM'' along with the mark/device/logo/artistic work of sun rays. They enjoy a market share of 90% in respect of its Dhall alone in
Tamilnadu. They have established an extremely efficient supply chain, logistic and wide spread distribution network. The trade mark
''UDHAIYAM'' together with the device/logo/artistic work of sun rays was honestly conceived employed and exploited by the applicant since
1940. They have invested heavily in bringing about a singular association between the said trade mark together with the device and the applicants
in the minds of the large body of consuming and trading public. They have spent substantial amounts towards advertisement of their trade mark
''UDHAIYAM'' along with the predominant device/logo/artistic work. The statement of turnover generated by the applicants would show that the
second applicant alone has generated sales turn over of approximately Rs. 178.50 Crores for the period 1994 to 2005 under the trade mark
''UDAIYAM'' and has spent a sum of approximately Rs. 92.3 lakhs for the period 1994 to 2005 towards the advertisement of the said trade
mark. The trade mark of the applicants has become well known mark and commands Immense reputation in India. The respondents have recently
started manufacturing and selling verieties of Dhall in both bulk packaging of 50 kgs, 100 kgs etc. and retail packing of 1 kg, 2 kgs, 5 kgs
predominantly employing the device/logo/artistic work which is identical /deceptively simitar to the distinct device/logo/artistic work of the
applicants. The unwary customers are deceived by seeing the device/logo/artistic work of the applicants. Using the identical device/logo/artistic
work of the applicants over the packages of the respondents clearly amounts to an act of infringement as well as a tort of passing off. The
applicants reputation and sales will be adversely affected by the reason of the respondents act of infringement and hence, the reliefs are sought for
as above.
In the common counter affidavit, the respondents would submit that they are carrying on business in manufacturing and marketing Dhall products
at Royapuram in Chennai right from the year 1959 under the name and style of ''S.S.P. Duralraj(Firm)''. In the year 1998, they adopted the label
mark ''ARVEE'' with the device of rising sun for their Dhall products. The letters ""AR"" are taken from the son of the second respondent and the
letters ""VEE"" are taken from the name of the brother of the second respondent''s son namely ''Vijay''. The adoption of the label mark along with
the device of rising son is Ironest and bona fide. The respondents also filled trade mark Application No. 1031213 in Class ''30'' for Dhall products
by claiming user from 21st January 1998. The said label mark was ordered to be advertised before acceptance of registration in the Trade Mark
Journal by the order of the Assistant Registrar of Trade Mark, Chennai dated 17 6.2005. Accordingly, the said label mark '' ARVEE"" was
advertised in Trade Mark Journal No. 1341 of 1st April 2006. The Registration Certificate is awaited from the Mumbai Trade Mark Registry. The
consumer packages label ""ARVEE"" is entirely different and distinctive from that of the plaintiffs label mark ''UDHAIYAM''. The first plaintiff is the
son of the brother-in-law of the second respondent. The first plaintiff and the second respondent are not unknown persons but related to each
other. The first plaintiff is not at all using the mark ''UDHAIYAM'' which is being used only by the second plaintiffs company. The sales turn over
of the respondents also runs into Crores of Rupees every year. They have also spent considerable advertisement and sales promotional expenses
for promoting their Dhall products bearing the label mark ''ARVEE1 through television, radio and media. The suit is filed out of business jealousy.
The device of rising sun is predominantly shown in the gunny bags of 50 kgs, 100 kgs etc. along with mark ""ARVEE"" but the respondents have not
shown the device Sic) in the consumer packages and it is being shown as a small logo in their composite label mark ''ARVEE''. For deceptive
similarity, the resemblance must be such as to be likely to deceive or cause confusion. The device of sun rays or the device of rising sun are very
common to the trade of several companies. Nobody could claim exclusive right over the device of rising sun. The respondents'' artist has drawn the
device of rising sun entirely different from that of the applicants'' artist. The applicants cannot claim exclusive right over such devices as they have
not employed any label or skill to claim it as their artistic work. There is no misrepresentation on the part of the respondents to sell their goods as
the goods of the applicants. Therefore, the respondents would pray that the order of ad-Interim Injunction may be vacated.
The point that arises for determination is whether the applicants have shown prima facie infringement of the applicants registered trade mark and
copy right and tort of passing off goods.
Learned Counsel for the applicants would submit that admittedly the respondents have started using the device of sun rays which would amount
to infringement of the applicants'' registered trade mark and copy right. The applicants have shown that they are the prior users of the device of sun
rays. The use of the device of sun rays by the respondents in respect of their Dhatt product is deceptively similar to the sun rays device of the
respondents. The defence of the respondent that the device of sun rays Is common to trade is wholly misconceived. Further, it cannot also be a
good defence that many other traders employ the device of rising sun. Further citing authorities pronounced by various High Courts and Hon''ble
Supreme Court he would submit that the applicants have established prima facie that the respondents have infringed the applicants registered trade
mark and copy rights.
Learned Senior counsel for the respondents would contend that the applicants are not the registered Proprietors of the trade mark
''UDHAIYAM''. The second applicant who is a different business entity cannot claim proprietorship over the composite label mark
''UDHAIYAM''. The device of sun rays is only a common device in the applicants composite label mark ''UDHAIYAM'' and not an essential
feature thereof. Therefore, the applicants cannot claim exclusive monopoly right over the device of sun rays. The device of sun rays is very
common among the traders. The comparison of the labels as a whole would go to show that there is no similarity between the label of the
applicants and the respondents. Further, the public will not be deceived or confused on seeing the label of the applicants. Therefore, the learned
Senior counsel would contend that the applications filed by the applicants deserve dismissal.
On a perusal of the certificate of registration of trade mark produced by the applicants, it is found that the trade mark ''UDHAIYAM'' with the
device sun rays was registered by the first applicant S. Sudhakar along with M/s. S. Giredharan, S. Senthivel and L. Arunkumar who trade in the
name and style of ''Shree Lakshmi Agro Foods''. It has been pleaded by the applicants that the first applicant is the joint Proprietor of the trade
mark ''UDHAIYAM'' and carries on business through the second applicant company. It has also been shown that the main object of the second
applicant company is to take over the assets and liability of ''Shree Lakshmi Agro Foods'' a partnership Firm carried on not only by the first
applicant but also by S. Dinakarand K. Selvaraj.
The main suit has been filed for bare injunction by one of the joint trade mark holder, S. Sudhakar along with the company which has got the
main object of taking over the business of ''Shree Lakshmi Agro Foods'', a partnership firm carried on by the first applicant along with others. Any
one of the joint trade mark holders can file the suit to protect the registered trade mark from the threat of infringement. It is not necessary In a suit
for bare injunction that, all the trade mark holders should be arrayed as a party. Therefore, I hold that the first applicant along with the company
has every right to lay this application seeking the relief of injunction.
It is established that the first applicant along with others jointly have got certificate of registration of trade mark ''UDHAIYAM'' with the device
sun rays. The applicants also have shown by filing the certificate issued by the Chartered Accountant that they had incurred huge amount in
advertising the trade mark. Their sales turn over would show that the applicants have got a reputation amongst the public for the trade mark which
has been registered. It is admitted in para 10 of the common counter affidavit filed by the first respondent ""the device of rising sun is predominantly
shown in gunny bags of 50 kgs, 100 kgs, etc., along with the mark ""ARVEE"". The device of rising sun in those packing materials are found prima
facie to be deceptively similar to the device of rising sun used in the packages of the applicants. Therefore, such deceptive use will have to be
injected or otherwise, the consumers will be the victim of deception. But, on a comparison of the packing materials employed by the applicants
bearing the trade mark ""UDHAIYAM"" and the consumer packages used by the respondents bearing the mark ''ARVEE'', it is found that the sun
rays in the trade mark of the applicants have been projected prominently whereas the (sic) in the consumer packages, used by the respondents is
found insignificant. Further, the device of sun rays registered by the applicants do not tally with the device of sun rays found in the consumer
packages of the respondents. The main feature found in the trade mark of the applicants is the device sun rays whereas the mark ''ARVEE1 has
been projected as a prominent one with the emblem having different type of sun rays in the background in the consumer packages of the
respondents.
The mark found in the trade mark of the applicants is ''UDHAIYAM'' whereas the mark found in the trade mark of the respondents is
''ARVEE''. Therefore, the mark found in the trade mark of the applicants and the respondents are totally different. But the applicants agitate over
the device of sun rays as it is allegedly used in the consumer packages of the respondents. The Court will have to see whether the purchasers of the
goods would be deceived on seeing the sun rays found in the consumer packages of the respondents.
The respondents have shown before the court that the device of sunrise or sun rays, is a very common device of the trade. Therefore, the
applicants cannot claim exclusive monopoly over the device of sun rays. But, if the device of sun rays used- by the respondents are deceptively
similar to the device of sun rays or sunrise registered by the applicants, then the court will have to interfere to protect the proprietorship of the trade
mark registered by the applicants. The applicants cannot claim a sole domain over the common device of sun rays as it is not the invention of the
applicants. But, the court is bound to curtail the use of sun rays resembling the trade mark of the applicants in order to avoid deception and
confusion in the mind of the public. This court has already taken a decision that the use of the rising sun in the gunny bags predominantly by the
respondents would create confusion in the mind of the public as it is used similarly to the device of the applicants.
It is found that the respondents also have advertised the trade mark with the label ARVEE in the Trade Marks Journal No. 1341 dated 1st
April 2006 and so made available to the public as on 7.7.2006 as per Section 20 of the Trade marks Act, 1999. The essential features found on
the trade mark of the respondents used in consumer packages are found to be totally different from the trade mark of the applicants. The
respondents have used their trade mark in consumer packages in a different way which in the opinion of the court does not have semblance of
deception of the trade mark of the applicants.
The learned Counsel for the applicants produced the authorities reported in
(1) Kirit Kumar Girdharlal Doshi v. Wimco Limited 1998 (18) PTC 459;
(2) Chimanlal Narsaji Suhan V. Parasmal Mithalal Parmar 1997 (17) PTC 729 (DB) ;
(3) Rajastan Snuff Factory v. Gordhan Co. and Ors. 1872 PTC 185; and
(4) Prince Rubber Industries v. K.S. Rubber Industries 1983 PTC 34
wherein it has been held that even if a different device is used deceptively similar to that of the registered trade mark, such a practice will have to
be prohibited by way of issuing order of injunction. But, In this case, the trade mark used by the respondents in the consumer packages does not
have the potential to generate a general recollection of the trade mark of the applicants with the device of sun rays. Therefore, the device of sun
rays used by the respondents in the consumer packages is not at all similar to the sun rays found in the device of the applicants. The pictorial
depiction in both the remarks are found to be totally distinctive. Prime facie, both the remark appear to be quite dissimilar. The ratio found in the
aforesaid authorities would apply only in a situation where the device used by the respondents are deceptively similar to the trade mark registered
by the applicants.
It has been held in the ratio laid down by the Honourable Supreme Court in Corn Products Refining Co. Vs. Shangrila Food Products Ltd.,
that the court has to address the question whether the two marks are likely to give rise to confusion or not. In the considered opinion of this court,
the trade mark used by the respondents in the consumer packages does not give rise to any scope for deception or confusion. The Honourable
Supreme Court, in Parle Products (P) Ltd. v. J.P. and Co., Mysore, has held as follows:
It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of
the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they
are of such character as to prevent one design from being mistaken for the other. It would be enough of the impugned mark bears such an overall
similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
In the instant case, the broad features found in the trade mark of the respondents used in the consumer packages were compared with that of the
registered trade mark of the applicants. The essential features which would go to register in the mind of the public are found to be different in those
trade marks.
In Cadila Health Care Limited v. Cadila Pharmaceuticals Limited (2001) SCC 73, the Honourable Supreme Court held as follows:
These observations appear to us to be contrary to the decision of this Court in Amritdhara case where it was observed that the products will be
purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of
average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons.
The mark ''UDHAIYAM'' of the applicants is totally different from the mark ''ARVEE'' found in the trade mark of the respondents. The trade
mark used by the respondents in the consumer packages will not even deceive the gullible mass in the rural base. Therefore,, it is quite impossible
to cheat the urban intelligentsia with such device in the trade mark
The Honourable Supreme Court, in Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories, . has held as follows:
When once the use by the defendant of the mark which is claimed to Infringe the plaintiffs mark is shown to be ""in the course of trade"", the
question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further
questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used
by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in
respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words ""or cause confusion"" introduce any
element which is not already covered by the words ""likely to deceive"" and it has some times been answered by saying that it is merely an extension
of the earlier test and does not add very materially to the concept indicated by the earlier words ""likely to deceive"". But this apart, as the question
arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in
the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two
marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by Saying down objective
standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is
the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the
comparison is for determining whether the essential features of the plaintiffs trade mark to be found in that used by the defendant. The identification
of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it
as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used
by the defendant as a whole Is deceptively similar to that of the registered mark of the plaintiff.
Here, in the instant case, the sun rays which is the device in the trade mark of the applicants is admittedly used by the respondents also But, the
device of the sun rays of the respondents in the consumer packages are not identical to that of the trade mark of the applicants. Of course, the
device of sun rays in the gunny bags of the respondents is found to be quite similar to that of the applicants.
On a general perception of the trade mark in the consumer packages of the respondents and the registered trade mark of the applicants, it is
found that nobody will be deceived or confused with the registered trade mark of the applicants. The offending trade mark used in the gunny bags
(of 50 kgs and 100 kgs) of the respondents is found to be deceptively similar to the registered trade mark of the applicants. The applicants have
established prima facie case for grant of interim injunction in respect of the use of the trade mark in the gunny bags of the respondents. If such
similar device is permitted to be used by the respondents, much hardship will be caused to the applicants who have got their trade mark registered.
The publication of the trade mark in the Trade Marks Journal by the respondents does not confer any right on the respondents to violate the
registered trade mark of the applicants. At the same time, the trade mark used by the respondents in the consumer packages are found to be
dissimilar to and quite different from that of the registered trade mark of the applicants. Therefore, the applicants have failed to establish prima facie
case in respect of the trade mark used by the respondents in the consumer packages. If the respondents are restrained from using their trade mark
in the consumer packages which is quite distinct from the registered trade mark used by the applicants, much hardship will be caused to the
respondents. Therefore, the balance of convenience in respect thereof is only in favour of the respondents.
In view of the above, the ad interim injunction granted in O.A.Nos.145 to 147 of 2007 in C.S. No. 60 of 2007 stands vacated in respect of
the use of the trade mark and copy rights and doing the act of passing off by the respondents in the consumer retail packages and the interim
injunction granted therein in respect of the use of the trade mark and copy rights and doing the act of passing off by the respondents in the bulk
gunny bags of 50 kgs, 100 kgs, etc., is made absolute. O.A.Nos.145 to 147 of 2007 in C.S. No. 60 of 2007 and Application Nos.1960, 1962
and 1964 of 2007 in O.A.Nos.145, 146 and 147 of 2007 respectively are ordered accordingly. Application Nos.1961, 1963 and 1965 of 2007
In O.A. No. 145, 146 and 147 of 2007 respectively shall stand closed.