Madras High Court
Itc Limited vs Sri Adhi Parasakthi Match on 11 August, 2021
C.S.No.451 of 2018
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 11.08.2021
CORAM
THE HONOURABLE DR.JUSTICE G.JAYACHANDRAN
C.S(Comm.Div.).No.451 of 2018
ITC Limited,
69 (Old No.41),
Chamiers Road,
Chennai 600 018.
Rep.by its Constituted Attorney
Mr.V.S.Sridhar ... Plaintiff
Vs.
1.Sri Adhi Parasakthi match
Hanuman Nagar, Padanthal Post,
Sattur-626 203.
2.Thirupathi Match Works,
Padanthal, Sattur-626 203.
3.Sri Balaji Transport,
NH-44 Service Road, Sattur,
Tamil Nadu 626 203.
4.Kanna Match Company,
1st Street, Gandhi Nagar,
Kovilpatti-628 501.
5.Thilagaratnam Match Works,
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1st Street, Gandhi Nagar,
Kovilpatti-628 501.
6.Suresh Match Works,
1st Street, Gandhi Nagar,
Kovilpatti-628 501.
7.R.K.V.Transport,
627, Balaji Nagar,
Near fly over,
Kovilpatti 628 501.
8.Ashok Kumar,
Unknown persons,
India.
9. Ashok Kumar,
Unknown persons,
India.
10Ashok Kumar,
Unknown persons,
India.
11.Ashok Kumar,
Unknown persons,
India.
12.Ashok Kumar,
Unknown persons,
India.
13.Ashok Kumar,
Unknown persons,
India.
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C.S.No.451 of 2018
14.Ashok Kumar,
Unknown persons,
India.
15.Ashok Kumar,
Unknown persons,
India.
16.Saravana Bhava,
NH-44, Service Road,
Sattur, Tamilnadu-626 203.
17.Mr.Guruswamy,
No.1/376 Srirangapuram village,
Sattur Taluk, Tamil Nadu-626 203.
18.Rama Trading Company,
1054/6, Rajiv Nagar,
5th Street, Kovilpatti-628 501.
19.Nagappa Match Works,
No.9, UCC Street, Bodipet,
Gudiyattam-632 602.
(Defendant 16 to 19 impleaded as per order
in A.No.6673/2018 dated 08.08.2019)
20.Malaimman Transporter Godown,
Near Magalir Police Station,
Sattue Taluk-626 203.
(20th defendant impleaded as per order
dated 13.03.2020 in A.No.558/2020)
... Defendants
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C.S.No.451 of 2018
Prayer: The Civil Suit has been filed under Order IV Rule 1 of
the Original Side Rules read with Order VII Rule 1 of C.P.C r/w Sections
27, 28, 29, 134 and 135 of the Trade Marks Act, 1999 and Sections 51, 54,
55 & 62 of the Copyright Act, 1957 and Section 7 of the Commercial
Courts, Commercial Division and Commercial Appellate Division of High
Courts Act, No.4 of 2016, praying for
(a) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from infringing the registered trade
mark/label AIM of the plaintiff by manufacturing, selling and/or distributing
matches under the almost identical mark/label ATM or any other similar or
identical or deceptively similar mark and artistic work and in any other
manner whatsoever;
(b) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from manufacturing, selling,
offering for sale and/or distributing matches which would amount to passing
off their goods as and for the goods of the plaintiff or as being in some way
connected with the plaintiff by using the mark/label ATM or any other mark
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C.S.No.451 of 2018
similar or identical or deceptively similar to the plaintiff's trade mark/label
AIM and artistic work and in any manner whatsoever;
(c ) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from manufacturing, selling,
offering for sale and/or distributing matches from committing acts of
copyright infringement by making substantial reproduction of the plaintiff's
copyright in the artistic work AIM label by use of identical colour scheme
or any other label similar or identical or deceptively similar thereto and in
any other manner whatsoever;
(d) A permanent injunction restraining the defendants 8 to 15 and
any other person or entity infringing, by themselves, their respective
proprietors/directors/partners as the case may be, successors-in-business,
servants, agents, distributors, dealers, stockists, shop keepers, wholesalers,
retailers, representatives, assigns and all other persons claiming through or
under them from manufacturing, selling, offering for sale and/or distributing
matches from committing acts of trademark and copyright infringement by
making substantial reproduction of the plaintiff's copyright in the artistic
work AIM label by use of identical colour scheme or any other label similar
or identical or deceptively similar thereto and in any other manner
whatsoever;
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(e) The defendants be ordered to surrender to the plaintiffs for
destruction of all goods viz., matches, matchboxes, labels, cartons, dyes,
blocks, screen prints, advertisement materials, packing materials and other
goods containing the trademark ATM or any other mark similar or identical
or deceptively similar to plaintiff's registered trademark AIM;
(f) The defendants be ordered to pay, jointly and severally, to the
plaintiff a sum or Rs.1,25,00,000/- (Rupees One Crore Twenty Five Lakhs
only) as damages for committing acts of infringement of trademark and
passing off;
(g) A preliminary decree be passed in favour of the plaintiff
directing the defendants to render true and faithful account of profits earned
by them by use of trademark ATM for matches, which is deceptively similar
to the plaintiff's trademark AIM and a final decree be passed in favour of the
plaintiff for the amount of profits thus found to have been made by the
defendants after the latter have rendered accounts;
(h) For entire costs of the suit.
For Plaintiff : Mr.Arun C.Mohan
For D3, D6 and D18 : Mr.C.Kasirajan
For D2, D5 : Set ex-parte
For D1, D4, D16, D19 & D20 : No appearance
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C.S.No.451 of 2018
JUDGMENT
(This case has been heard through video conference)
The suit is of the year 2018. Some of the defendants were served
suit summons directly and the rest of the defendants, service was completed
through substitute service by way of paper publication. None filed their
written statement.
2. The learned counsels appeared through video conference and
represented the defendants 3, 4, 17 and 18. For non appearance, the
defendants 2, 3, 5 and 6 were set ex-parte on 30.09.2019. The 1st defendant
before this Court gave an undertaking to file a memo that he will not
infringe the registered Trademark of the plaintiff. However, no such memo
filed in the Registry. Today, there is no representation for the 1st defendant.
3. The facts of the case as found in the plaint is that the plaintiff's
company, which holds the registered Trademark/label AIM for its product
matchbox, being aggrieved by the identical imitation by the defendants 1, 2,
4, 5, 6 and 19 who are the manufacturers of the Matches in the Sathur,
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C.S.No.451 of 2018
Srivilliputhur and Gudiyattam area and distributing it to various parts of the
country through the other defendants had laid the suit for injunction and
damages.
4. The plaintiff to mitigate the infringement and passing off had
taken out an interlocutory applications appointing Advocate Commissioner
to visit the premises of the defendants and to seize the infringed material
and also an application for ad interim injunction. This Court considering the
prayer in Application No.636 of 2018 granted ad interim injunction on
13.07.2018 also appointed four Advocate Commissioners to inspect the
premises and seize the offending products. The relevant paragraph of the
order passed by this Court in Application No.5084 of 2018 dated
13.07.2018 reads as under:
“12.The Advocate Commissioners are
directed to file reports before this Court by
27.07.2018. The initial remuneration of the
Advocate Commissioners is fixed at Rs.20,000/-
each to be paid directly by the plaintiff. Registry
to issue warrant immediately to (1)
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C.S.No.451 of 2018
Mr.S.Elumalai, Enrol.No.MS 3502/2015; Mobile
No.9003030113; and (2) Mr.K.Mohanraj,
Enrol.No.MS 2839/2015; Mobile
No.9094853453/8438441849; for execution at the
premises of the first, second and third defendants
& (3) M/s.M.Stella, Enrol.No. MS 2224/2015;
Mobile No.9500710059, 7299780159; and (4)
Mr.N.Kannan, Enrol.No. MS. 2842/2015; Mobile
No.8870910972, for execution at the premises of
the fourth, fifth, sixth and seventh defendants. The
Advocate Commissioners are directed to seize the
offending products as enumerated in the
application”
5. Thereafter, when the defendants came to know that some of the
infringed material is stocked at Saravana Bhava, NH 44 Service Road,
Sattur. Yet another application No.5874 of 2018 was filed for similar relief
namely to visit the said premises and seize the infringed product. This Court
allowed that application and issue warrant to the Advocate Commissioner to
inspect the above said premises. The Advocate Commissioner who visited
the premises have filed report indicating the match bundles carrying the
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C.S.No.451 of 2018
registered mark of the plaintiff either identical or similar were found in the
Godown premises and seized after taking inventing of the infringed
products, the goods were given to the custody of the respective defendants
with an undertaking not to dispose it off.
6. Pending suit, yet another application No.96 of 2020 was filed
by the plaintiff for appointing Advocate Commissioner to inspect the
premises Maliamman Transporter Godown who is the 20th defendant
impleaded. The Advocate Commissioner pursuant to the order passed by
this Court in A.No.96 of 2020 dated 08.01.2020 inspected the premises of
the 20th defendant and seized the infringed material from the premises and
filed a report to that effect and over all appreciation of facts and evidence
placed before this Court.
7. This Court finds that the plaintiff's case of infringement of its
Trademark, copyright and passing off is well found from the material found
in the defendants' premises during the inspection of the Advocate
Commissioners. The various reports filed by the Advocate Commissioners
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pursuant to the orders of this Court goes to show that in spite of the interim
injunction against these defendants particularly the defendants 1, 2, 4, 5, 6
and 19 the manufacturers of matchbox had been continuously
manufacturing Match sticks affixing the label ATM which is visually
deceptive to that of the plaintiff's label AIM with Bulls Eye which is
identical to that of the plaintiff.
8. The learned counsel for the plaintiff states that the plaintiff will
be satisfied if relief of injunction against the defendants from infringing and
passing off the plaintiff's registered trademark is granted. In respect of other
reliefs the plaintiff is not pressed.
9. In view of the above said representation, there is no further
evidence is required since the evidence from the Commissioner reports the
manufacturing and circulation of the matchbox carrying label infringing the
Trademark and copyright of the plaintiff, this Court is of the view that even
without recording oral evidence, summary judgment under Order XIII Rule
1 shall be passed as below:
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C.S.No.451 of 2018
(a) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from infringing the registered trade
mark/label AIM of the plaintiff by manufacturing, selling and/or distributing
matches under the almost identical mark/label ATM or any other similar or
identical or deceptively similar mark and artistic work and in any other
manner whatsoever
(b) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from manufacturing, selling,
offering for sale and/or distributing matches which would amount to passing
off their goods as and for the goods of the plaintiff or as being in some way
connected with the plaintiff by using the mark/label ATM or any other mark
similar or identical or deceptively similar to the plaintiff's trade mark/label
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C.S.No.451 of 2018
AIM and artistic work and in any manner whatsoever;
(c) A permanent injunction restraining the defendants 1-7,
themselves, their respective proprietors/directors/partners as the case may
be, successors-in-business, servants, agents, distributors, dealers, stockists,
shop keepers, wholesalers, retailers, representatives, assigns and all other
persons claiming through or under them from manufacturing, selling,
offering for sale and/or distributing matches from committing acts of
copyright infringement by making substantial reproduction of the plaintiff's
copyright in the artistic work AIM label by use of identical colour scheme
or any other label similar or identical or deceptively similar thereto and in
any other manner whatsoever
(d) A permanent injunction restraining the defendants 8 to 15 and
any other person or entity infringing, by themselves, their respective
proprietors/directors/partners as the case may be, successors-in-business,
servants, agents, distributors, dealers, stockists, shop keepers, wholesalers,
retailers, representatives, assigns and all other persons claiming through or
under them from manufacturing, selling, offering for sale and/or distributing
matches from committing acts of trademark and copyright infringement by
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C.S.No.451 of 2018
making substantial reproduction of the plaintiff's copyright in the artistic
work AIM label by use of identical colour scheme or any other label similar
or identical or deceptively similar thereto and in any other manner
whatsoever;
(e) Infringement material seized from the respective defendants as
found in the report of the Advocate Commissioners shall be destroyed either
by the respective respondents/defendants within a period of 15 days or the
plaintiff shall be entitled to take the possession of the materials seized and
destroy it. The costs for such exercise shall be paid by the respective
defendants.
10. In the result, the relief (a) to (e) are allowed. The relief (f) and
(g) are dismissed. There shall be no order as to costs.
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C.S.No.451 of 2018
DR.G.JAYACHANDRAN, J.
rpl
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11.08.2021
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