Madras High Court
Moham Retail Private Ltd vs Naidu Hall Family Store on 19 April, 2021
O.S.A.Nos.83 to 85 and 95 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 19.04.2021
CORAM :
THE HON'BLE MR.SANJIB BANERJEE, CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
O.S.A.Nos.83 to 85 and 95 of 2021
Moham Retail Private Ltd.,
rep. By its director Sujay Kanth ... Appellant
Vs.
Naidu Hall Family Store,
rep. By its partner G.Venugopal ... Respondent
Prayer: Appeals filed against the order dated 18.01.2021 in
O.A.No.620 of 2020, 618 of 2020, 619 of 2020 and 617 of 2020 in
C.S.No.325 of 2020.
For Appellant :: Ms.S.Subashiny
For Respondents :: Mr.Satish Parasaran,
Senior counsel,
for Mr.K.Rajasekaran
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O.S.A.Nos.83 to 85 and 95 of 2021
COMMON JUDGMENT
(Delivered by the Hon'ble Chief Justice)
These appeals are directed against the order of January 18,
2021 by which the appellant, the only defendant in the suit for
infringement and passing off, has been restrained from using the
word mark ‘Naidu Hall’ in any manner or form.
2. It is recorded that the plaintiff was not called upon in the
appeals.
3. It is evident from the reasoned judgment and order that
the plaintiff claimed the mark as a family mark of the family of
M.G.Naidu who had started the business of “Naidu Hall” in the year
1939. M.G.Naidu apparently founded “Naidu Hall” in 1939 as a
blouse-tailoring unit in a garage. In due course, the business
developed goodwill and reputation and other ladies' underclothings
were added to the merchandise. The plaintiff has also added
salwars, sarees and western wear as products now marketed under
the common brand of “Naidu Hall”.
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4. The principal partner of the plaintiff, G.Venugopal, is the
son of M.G.Naidu, deceased, the founder of the business in 1939.
The plaintiff claims exclusivity over the word and label mark “Naidu
Hall”. The plaintiff apparently owns the domain name and
registration pertaining to “naiduhall.co.in” since 2007.
5. The impugned judgment records that “Naidu Hall” is a
registered word mark in Class 25 for which due certification has
been issued in favour of the plaintiff. In addition, “Naidu Hall” is
also registered in the name of the plaintiff as a device mark in Class
25. “Naidu Hall The Family Store” is also registered in favour of the
plaintiff in Class 35. Appropriate documents in such regard were
filed before the trial Court. The plaintiff relied on a certificate issued
by its Chartered Accountants indicating its annual turnover to be in
excess of Rs.137 crore in financial year 2017-18. The plaintiff
claimed that advertisement costs in excess of Rs.66 lakh had been
expended in the same financial year.
6. The defendant has apparently started a business by the
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O.S.A.Nos.83 to 85 and 95 of 2021
name of “NAIDUHALL 1939 A Moham Venture”. Websites of the
defendant had also been noticed by the plaintiff before the plaintiff
issued a cease and desist notice on October 10, 2019. The
defendant replied to the notice on October 22, 2019. Indeed, upon
an exparte injunction being granted in favour of the plaintiff on
December 7, 2020, the defendant applied for vacating such
injunction, inter alia, on the ground that there was a delay of more
than a year in filing the suit after the issuance of the cease and
desist notice of October 10, 2019.
7. The principal defence is that the defendant obtained the
rights from one R.Arvind, who is said to be one of the legal heirs of
M.G.Naidu, deceased, the founder of the store in 1939 and the
person who originally used the mark. According to the defendant, it
purchased the rights of R.Arvind under a business transfer
agreement and obtained exclusive rights pertaining to the mark
“Naidu Hall” under such agreement. Even at this stage, counsel for
the defendant seeks to assert such agreement and the rights
obtained by the defendant thereunder.
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8. The impugned judgment records that one Sujay Kanth a
director of the defendant company was the son of the elder sister of
the wife of G.Ramasamy, who was another son of M.G.Naidu,
deceased, the founder of Naidu Hall business. R.Arvind appears to
be the son of G.Ramasamy. The trial Court found that there was
nothing to indicate that there was any family arrangement which
permitted exclusive rights pertaining to the Naidu Hall word or label
mark in favour of R.Arvind. The trial Court also found that Sujay
Kanth could not be said to be an heir of M.G.Naidu, the founder of
the mark for the defendant company to claim any rights through
such director.
9. More importantly, the Trial Court recorded that the word
mark “Naidu Hall”, had been registered in 1967 and the partnership
firm continuing the business of Naidu Hall was established in 1973
and the family then consisted of the widow of M.G.Naidu,
G.Jayalakshmi and her three sons, G.Sukumar, G.Ramasamy and
G.Venugopal. The trial Court noticed a document of March 13, 1982
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wherein G.Ramasamy was described as a retiring partner and the
business of the firm was continued by the widow and the two other
sons of M.G.Naidu. A third document of April 1, 1982 was a further
partnership deed consolidating the business run in the name and
style of “Naidu Hall” by mother G.Jayalakshmi and sons G.Sukumar
and G.Venugopal. On the basis of such material before the trial
Court, a prima facie view was taken that the defendant did not
have any right to use the impugned mark and merely had the right
to prosecute the pending application before the Trade Marks
registry, and that the other heirs of M.G.Naidu continued to
exclusively run and manage the Naidu Hall hosiery or clothing
business.
10. On the basis of the lucid narration of facts in the judgment
impugned and the grounds which impelled the trial Court to take a
prima facie view that the defendant’s predecessor-in-interest may
have had no rights to confer to the defendant, the injunction came
to be issued. There is no basis to interfere with the order in such
regard. It also appears that the defendant or its predecessor-in-
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interest had sought to assert rights pertaining to the mark “Naidu
Hall” in class 35 pertaining to wholesale and retail distribution of
ready-made garments and accessories, retail stores and wholesale
distribution under the mark “Naidu Hall” in some form. The
judgment records that the status of the application filed by the
defendant as at December 12, 2020 was that it stood opposed by
G.Venugopal. The trial Court relied on such fact and G.Venugopal’s
successful resistance since 2005 of the claim of exclusivity by the
defendant or its predecessor-in-interest of the mark “Naidu Hall” to
be conclusive, at least for interlocutory purposes.
11. It is quite possible that the defendant may have entered
into the agreement with R.Arvind for valuable consideration.
However, merely because the defendant may have been duped by
some other or the defendant may have been careless in checking
whether the rights canvased by R.Arvind were really available to
R.Arvind, the defendant may not be entitled to any protection in
respect of the word or label mark “Naidu Hall”.
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O.S.A.Nos.83 to 85 and 95 of 2021
12. What is evident from the order impugned dated January
18, 2021 is that a strong prima facie case was found in favour of
the plaintiff partnership firm as being the entity which controlled the
Naidu Hall garments business after the demise of founder
M.G.Naidu. It also weighed with the trial Court that son
G.Ramasamy left the partnership business in 1982 and severed
from the other heirs of M.G.Naidu. On the ground of balance of
convenience, the huge turnover of the plaintiff in the year 2017-18
and the considerable advertisement expenses incurred by the
plaintiff firm also found favour with the Trial Court.
13. It is evident that relevant considerations were taken into
account by the trial Court in arriving at the final interlocutory
decision. On the basis of the material on display, the trial Court
could not have declined the injunction as sought by the plaintiff
firm. There is nothing that the defendant appellant has been able to
demonstrate at this stage to detract from the judgment and order
impugned. However, it is made clear that all the observations in the
interlocutory order and herein will be regarded as tentative and will
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O.S.A.Nos.83 to 85 and 95 of 2021
not stand in the way of the appellant herein establishing an
appropriate right to the mark “Naidu Hall” in course of the trial.
14. O.S.A.Nos.83, 84, 85 and 95 of 2021, all directed against
the same order of January 18, 2021, stand dismissed.
C.M.P.Nos.3892, 3452, 3332 and 3441 of 2021 are closed. There
will be no order as to costs at this stage.
(S.B., CJ.) (S.K.R., J.)
19.04.2021
Index : Yes/No
tar
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O.S.A.Nos.83 to 85 and 95 of 2021
THE HON'BLE CHIEF JUSTICE
AND
SENTHILKUMAR RAMAMOORTHY, J.
(tar)
O.S.A.Nos.83 to 85 and 95 of 2021
19.04.2021
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