Madras High Court
A.D.Padmasingh Isaac vs Sudali Aachi Provisions on 3 August, 2021
O.S.A. (CAD) No.161 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 06.01.2022
Pronounced on : 21.01.2022
CORAM :
THE HON'BLE MR.MUNISHWAR NATH BHANDARI,
ACTING CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE P.D.AUDIKESAVALU
O.S.A. (CAD) No. 161 of 2021
and
C.M.P. Nos. 21504 and 21508 of 2021
1.A.D.Padmasingh Isaac
Trading as Aachi Spices and Foods
Old No.4, New No. 181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040.
2.M/s. Aachi Masala Foods (P) Ltd.,
Old No.4, New No.181/1,
6th Avenue, Thangam Colony,
Anna Nagar, Chennai – 600 040.
Represented by its Director
Mr. Ashwin Pandian .. Appellants
vs
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Sudali Aachi Provisions
No.28, First Floor,
Velachery, Bazzar Road,
Balayagarden,
Chennai – 600 091.
Represented by its Partners
Mrs.Muthu Mari Ammal and Mr.G.Iyappan .. Respondents
Prayer: Original Side Appeal is filed under Order XXXVI Rule 1 of
Original Side Rules read with Section 15 of Letters Patent, 1865 and the
Provisions of 13(1) of the Commercial Courts Act, 2015, praying to set
aside the Judgment and Decree dated 03 August 2021 passed in C.S.
(Comm. Div.) No.558 of 2018, allow the suit as prayed for.
For the Appellants : Mr. P.S.Raman, Senior Counsel
for Ms. C.Gladys Daniel
JUDGMENT
(Order of the Court was made by
the Hon'ble Mr.Justice P.D.Audikesavalu)
(through video conference)
This inter-court appeal under Clause 15 of the Letters Patent, 1865,
read with Section 13 of the Commercial Courts Act, 2015, arises out of the
judgment and decree dated 03.08.2021 passed in C.S. (Comm.Div.) No.558
of 2018 on the file of the Original Side of this Court.
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2. The trademark 'Aachi' is said to have been conceived and adopted by
the First Appellant, as a proprietary concern 'Abhishek Enterprises' which
commenced in the year 1995 for manufacturing and marketing a variety of
spices, and the First Appellant applied and registered that trademark in the
year 1999. Later, in the year 2002, the First Appellant entered into a
partnership along with one Rani Pandian under the name and style of
'Naveen Products' for the same business. After incorporation of the Second
Appellant viz., Aachi Masala Food Private Limited on 13.06.2006, the
assets and liabilities of the said Naveen Products have been transferred to
the Second Appellant with effect from 30.11.2006 and the said company has
been carrying on business as manufacturers, traders, wholesalers, retailers,
producers, inventors, importers, exporters, agents, distributors, consignors
or otherwise dealing in masala and food products under the trademark
'Aachi'. Thereafter, on 31.03.2007, the said partnership firm Naveen
Products was dissolved. The First Appellant on 01.04.2007 and 21.04.2010
executed License User Agreements in favour of the Second Appellant.
Another company viz., Aachi Spices and Foods Private Limited had been
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incorporated on 17.03.2010 and another license user agreement was entered
by the First Appellant with that company on 21.04.2010. The First
Appellant as the proprietor of the trademark 'Aachi' continues to use it
through its licencees, viz., the Second Respondent and the said Aachi Spices
and Foods Private Limited. The First Appellant has also obtained
registration of the trademark 'Aachi Super Stores' in A.No.1690157 in Class
42 with respect to wholesale and retail stores for food products since
22.05.2008, which is valid and subsisting.
3. The Respondent viz., 'Sudali Aachi Provision', is a partnership firm
registered under the Indian Partnership Act, 1932, in which Mrs. Muthu
Mari Ammal and Mr. G.Iyappan are partners, carrying on business of
provision store at No.28, first Floor, Velachery, Bazzar Road, Balayagarden,
Chennai – 600091. The Appellants object to the Respondent using the word
'Aachi' in their tradename viz., 'Sudali Aachi Provision' and have filed the
suit in C.S. (Comm.Div.) No.558 of 2018 claiming the following reliefs:-
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“ (a) granting a permanent injunction, restraining the
defendant by itself, its servants, agents, distributors, or anyone
claiming through him from manufacturing, selling, advertising,
offering for sale and running the website using same or similar
or identical Trade Mark SUDALI AACHI
PROVISION/sudaliaachi.com or any other similar Trademark
or in any media and use the same in invoices, letter heads and
visiting cards or by using any other Trademark which is in any
way visually or phonetically similar to the 1st plaintiff's
trademark AACHI/AACHI SUPER STORE and use the mark in
invoices, letters heads and visiting cards or any other trade
literature or by using any other Trademark which is in any way
visually, or phonetically similar to the plaintiffs' registered
trademark No.1690157 in Class 42 or in any manner infringe
the 1st plaintiff's registered trademark.
(b) granting a permanent injunction, restraining the
defendant, by itself, its servants, agents, distributors, or anyone
claiming through him from manufacturing, selling, advertising,
offering for sale and running the website using same or similar
or identical Trade Mark SUDALI AACHI
PROVISION/sudaliaachi.com or any other similar Trademark
or in any media and use the same in invoices, letter heads and
visiting cards or by using any other trade mark which is in any
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way visually or deceptively or phonetically similar to the
plaintiffs' trademark AACHI/AACHI SUPER STORE or use the
mark in invoices, letters heads and visiting cards or any other
trade literature or by using any other Trademark which is in
any way visually, or phonetically similar to the plaintiffs'
Trademark AACHI/AACHI SUPER STORE or in any manner
pass off the plaintiffs' goods.
(c) directing the defendant to surrender to the plaintiffs all
the packing material, cartons, advertisement materials and
hoardings, letter-heads, visiting cards, office stationery and all
other materials containing/bearing the name Sudali Aachi
Provision or other visually or phonetically similar trade mark
used in the pouches and packets.
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark Sudali
Aachi Provision and decree the suit for the profits found to have
been made by the defendant, after the defendant has rendered
accounts.”
4. The Respondent had filed Written Statement contending that the shop
where they are carrying on business as provisional store has been named
after Sudali Aachi, who is the grandmother of one of their partners and that
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the word 'Aachi', which means grandmother in Tamil Language is a publici
juris and has a separate distinct character prior to the registration of the
trademark itself and entitled the protection under Section 30 of the Trade
Marks Act, 1999. It is further pointed out that while the Appellants
primarily dealt with masala and spices, the Respondent is the retailer and
wholesalers of provisions, and though the Appellants claim to have obtained
the trademark for 'Aachi Super Stores', they are not carrying any such
wholesale or retail activity in the groceries and as such, they cannot restrain
the Respondent from adopting the name chosen for their business.
5. The following issues had been framed for trial on the basis of the
pleadings of the parties:-
“(i) Whether the word 'AACHI' is a publici juris available in
public domain and entitled to protection under Section 30 of the
Trade Marks Act, 1999?
(ii) Whether the plaintiffs' trademark “AACHI SUPER
STORES” bearing No.1690157 under Class 42 is infringed by
the defendant by using the name “SUDALI AACHI
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PROVISION”?
(iii) Whether the mark of the defendant 'SUDALI AACHI
PROVISION' on the whole or part is identical or deceptively
similar to the registered trademark of the plaintiff 'AACHI
SUPER STORES'?
(iv) Whether the plaintiffs are entitled for the relief of
permanent injunction against the defendant from using the mark
“SUDALI AACHI PROVISION” and the website
Sudaliaachi.com?
(v) Whether the plaintiffs have suffered any monetary loss of
goodwill on the defendant using the word 'SUDALI AACHI
PROVISION'?
(vi) Any other relief ?”
The learned Judge elaborately considered the rival submissions with
reference to the evidence on record. After holding issues (i) to (iii) against
the Appellants and that they were not entitled to the reliefs claimed, the suit
was dismissed with costs.
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6. Mr. P.S.Raman, Learned Senior Counsel assisted by Ms. Gladys
Daniel, Learned Counsel for the Appellants vehemently contended that the
trademark 'Aachi' is distinctive of the goods of the Appellants alone and has
obtained secondary meaning in the market of spices, masalas and other food
products from the time of commencement of their business, and the
inclusion of that word 'Aachi' in the tradename of 'Sudali Aachi Provision'
by the Respondent causes deception and confusion in the minds of the
consumers who would be misled to believe that some sort of business
connection exists between the Appellants and the Respondent when there is
none.
7. At this juncture, it would be useful to refer to the decision of the
Hon'ble Supreme Court of India in Laxmikant V.Patel -vs- Chetanbhai
Shah [(2002) 3 SCC 65], where the legal position on protection of
trademark has been laid down as extracted below:-
“12. In Oertli v. Bowman (at p. 397) the gist of passing-off
action was defined by stating that it was essential to the
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success of any claim to passing off based on the use of given
mark or get-up that the plaintiff should be able to show that the
disputed mark or get-up has become by user in the country
distinctive of the plaintiffs goods so that the use in relation to
any goods of the kind dealt in by the plaintiff of that mark or
get up will be understood by the trade and the public in that
country as meaning that the goods are the plaintiffs goods. It is
in the nature of acquisition of a quasi-proprietary right to the
exclusive use of the mark or get-up in relation to goods of that
kind because of the plaintiff having used or made it known that
the mark or get-up has relation to his goods. Such right is
invaded by anyone using the same or some deceptively similar
mark, get-up or name in relation to goods not of plaintiff. The
three elements of passing off action are the reputation of
goods, possibility of deception and likelihood of damages to
the plaintiff. In our opinion, the same principle, which applies
to trade mark, is applicable to trade name.”
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The Division Bench of this Court in Orchid Chemicals &
Pharamaceuticals Ltd -vs- Wockhardt Limited [(2013 (3) CTC 841)] has
dealt with the question of exclusive right under the Trade Marks Act, 1999
(hereinafter referred to as 'the Act' for short) in the following words:-
“5.6. Sections 28 to 30 of the Trade Marks Act, 1999, deal with
the effect of registration under Chapter IV of the Act. In so far
as Section 28 of the Act is concerned, it deals with the rights
conferred by registration. Section 28 of the Act specifically
deals with the “exclusive” right under the Act. Therefore, a
registered Proprietor of a Trade Mark can assert an exclusive
right to use the Trade Mark under Section 28 of the Act.
However, the said assertion is subject to two conditions. The
first condition is that it is “subject to other provisions of the
Act”. The second condition is that it is subject to its “validity”.
5.7. Now coming to Section 29 of the Act, it deals with an
infringement of the registered Trade Mark. Section 29 of the
Act specifies that an infringement would occur when an
unregistered Proprietor uses a registered Trade Mark, which is
likely to cause confusion on the part of the public or which is
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likely to have an association with the registered Trade Mark.
Therefore, if one sees the object and reasons under Section 29
of the Act, it is clear that it is meant to be used against the
person, who is not entitled to use the said Trade Mark under
“law”. This is required to constitute an infringement.
5.8. Now coming to Section 30 of the Act, it limits the effect of
registered Trade Mark. A perusal of Section 30 of the Act
would show that Section 29 of the Act is subjected to it.
Therefore, Section 30 of the Act is an overriding provision to
Section 29 of the Act. However, the parameters stipulated
under Section 30 of the Act will have to be complied with. For
example, in a case where a party is using a registered Trade
Mark belonging to another one, if it is in accordance with
honest practices in industrial or commercial matters or is
detrimental to the distinctive character of the different Trade
Mark, no infringement would occur as it limits the effect of
registered Trade Mark. Similarly, when the usage is indicative
of a kind, quality or a quantity, then there will not be any
infringement notwithstanding the registration.
5.9. While considering the statutory provisions, the Courts
will have to read them together to understand the intending
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purpose and object. Therefore, we are of the considered view
that Sections 28 to 30 of the Trade Marks Act, 1999, are to be
read in connection with each other. Such a yardstick will have
to be adopted in view of the settled interpretative Principle of
Harmonious Construction.”
That apart, it must be recapitulated here that Section 9(1) of the Act creates
an absolute prohibition on registration of descriptive marks as trademark,
and the exception in its proviso enables such registration only if that
trademark has acquired distinctiveness before the application for
registration. Further, in terms of Section 32 of the Act, if any trademark has
been registered in breach of Section 9(1) of that Act, it shall not be declared
void if it has acquired distinctiveness after its registration and before
commencement of any legal proceedings questioning its validity. As such,
common words or descriptive words or names, cannot be treated as
trademark unless they have acquired unimpeachable reputation and
goodwill in the market across country so as to connote a secondary
meaning for that relevant word. On a conspectus of the said legal principles,
it would necessarily follow that in order to succeed in an action for
injunction to restrain its usage, it is incumbent upon the concerned Plaintiff
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to conclusively establish that the relevant word, which is publici juris
identifying something else in common parlance, has lost such primacy on
account of the synonymous connectivity of that word with the product for
which the Plaintiff has adopted as trademark.
8. Though strong reliance is placed on the decision of the Hon'ble
Supreme Court of India in T.V.Venugopal -vs- Ushodaya Enterprises Ltd.,
[(2011) 4 SCC 85] by the Appellants in support of their claim for exclusive
right to use the word 'Aachi' as their trademark and there cannot be any
qualms on the proposition of law laid down in that authoritative
pronouncement, the manner in which the relevant word has been used by the
Respondent, who is sought to be restrained from using it, would also
assume significance to determine its applicability to the case on hand. The
Respondent has explained that the provision store has been named after
Sudali Aachi, who is the grandmother of one of the partners of its
partnership firm. As rightly pointed out by the Learned Judge in the
impugned judgment, apart from adding it as suffix to many other words
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having various meanings, 'Aachi' is a description of an elderly lady in Tamil
language. It is not uncommon for the people from time immemorial,
especially in the southern parts of Tamil Nadu to address women by the
word 'Aachi' either separately or after their names in veneration and such
practice still continues to be in existence today. That apart, it is nobody's
case that the Respondent is manufacturing or selling any product under the
brand name of 'Sudali Aachi' in its provision store so as to compete with the
business of the Appellants. As a matter of fact, even according to the
Appellants, their products are some of the commodities made available for
sale in that shop of the Respondent along with the products of other
manufacturers, meaning thereby that the customers are definitely aware of
the distinction between the products of Appellants and those of other
manufacturers. Viewed from this perspective, there is neither any possibility
of deception nor any likelihood of damages to the reputation of goodwill of
the Appellants, so as to enforce any restraint on the tradename 'Sudali Aachi
Provision' used by the Respondents. It has been held by another Division
Bench of this Court in Malar Network (P) Ltd., -vs- Arun Prasath D (Order
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dated 28.03.2011 in O.S.A Nos.175 and 176 of 2010) that the existence of a
suffix before the word which has been registered as trademark by another
person would dispel any doubt of any connection with the registered holder
of that trademark. As such, there does not appear to be any acceptable
reason to differ from the well considered conclusions arrived in the
impugned judgment in this appeal.
9. Another plea made on behalf of the Appellants is that the red
coloured oval shaped background in which the words 'Sudali Aachi
Provision' has been inscribed by the Respondent in its logo imitates that of
the Appellants. It is not possible to accept the said contention inasmuch as
the said logo specifically contains the face of an elderly lady depicting the
grandmother of one of the partners of the partnership firm of the respondent,
at the top and the contains the words 'Sudali Aachi Provision' thereunder.
Moreover, when the provision store of the Respondent is a standalone shop
in a particular locality in a metropolitan city catering of needs of the
residents there who constitute a substantially literate population, with
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relatively a smaller scale of business transactions to that claimed by the
Appellant, it is hard to believe that the customers would be misled at the
first impression by the name board of the Respondent so as to infer that
there may be some connection between the Appellants and the Respondent.
In any event, the Appellants do not have any retail store though they
claimed to have obtained registration for trademark 'Aachi Super Stores' in
that regard.
10. While concluding, Learned Senior Counsel appearing for the
Appellants made a fervent plea that the refusal to grant the relief of
injunction for infringement and passing of goods against the Respondent in
this case ought not to be construed as if the Appellants has not established
their claim that their trademark has acquired distinctiveness and secondary
meaning by the widespread consumption of their products in the market. It
is made clear that the said question has not been determined in this Appeal
for the reasons already explained and nothing said in the impugned
judgment shall not impede the rights of the Appellants to independently
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establish such claim in any future litigation as against third parties.
In the result, the Appeal, which does not deserve to be entertained, is
dismissed. Consequently, the connected Civil Miscellaneous Petitions are
closed. There shall be no order as to costs.
(M.N.B., ACJ.) (P.D.A., J.)
21.01.2022
Index : Yes/No
Speaking Order: Yes/No
dm/kv
To:
1. The Sub Assistant Registrar,
Original Side,
Madras High Court,
Chennai - 600 104.
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O.S.A. (CAD) No.161 of 2021
M.N.BHANDARI, ACJ
AND
P.D.AUDIKESAVALU,J.
Dm/kv
O.S.A. (CAD) No. 161 of 2021
and
C.M.P. Nos. 21504 and 21508 of 2021
21.01.2022
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