Madras High Court
Lotte India Corporation Ltd vs Shiv Sakthi Food Products on 18 August, 2021
C.S.No.431 of 2012
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 18.08.2021
CORAM
THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN
C.S.No.431 of 2012
and
A.No.1145 of 2020 & O.A.No.523 of 2012
Lotte India Corporation Ltd.,
Second Floor, Murugesan Complex,
84, Greams Road, Thousand Lights,
Chennai – 600 006.
Rep. by its Company Secretary,
T.G.Karthikeyan ...Plaintiff
.Vs.
Shiv Sakthi Food Products,
Sainik Colony, Lashkar,
Gwalior – 474 001. ... Defendant
Plaint filed under Order IV Rule 1 of the Original Side Rules and
Order VII Rule 1 of C.P.C., r/w. Sections 27, 28, 29, 134 & 135 of the
Trade Marks Act, 1999 and Section 51, 54, 55 & 62 of the Copyright
Act, 1957, praying for a judgment and decree as follows:-
a) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, legal representatives, successors in
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business, assigns, servants, agents, transporters, distributors, printers,
stockists, wholesalers, dealers, retailers, advertisers or any one claiming
through or under them from infringing plaintiff's registered trademarks
LOTTE COFFY BITE label / wrapper by manufacturing, distributing,
marketing, selling, offering for sale, advertising or in any other manner
dealing in toffees, chocolates, confectionery etc., or any other product
bearing an almost identical trademark COFFEE TOFFEE and / or
package, wrapper, container, carton, label with colour scheme, getup,
layout which are almost identical / similar to the essential features of
plaintiff's registered trade mark COFFY BITE label / wrapper;
b) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, their legal representatives,
successors in business, assigns, servants, agents, transporters,
distributors, printers, stockists, wholesalers, dealers, retailers or any one
claiming through or them from committing acts of copyright
infringement by making substantial reproduction of the plaintiff's
copyright in the artistic work COFFY BITE Labels / wrappers and
pouchs / packets by use of identical colour scheme of red, white and
yellow with blue background for their COFFEE TOFFEE label / wrapper
and pouch / packet or in any other manner whatsoever;
c) a permanent injunction restraining the defendants by
themselves, their partners, proprietor, their legal representatives,
successors in business, assigns, servants, agents, transporters,
distributors, printers, stockists, wholesalers, dealers, retailers or any one
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C.S.No.431 of 2012
claiming through or them from committing acts of passing off and
enabling others to pass off by manufacturing, distributing, marketing,
selling, offering for sale, advertising or in any other manner dealing in
toffees, chocolates confectionary etc., or any other product bearing an
almost identical trademark COFFEE TOFFEE and / or package, wrapper,
pouch, packet, container, carton, label, label with colour scheme, getup,
layout which are identical / similar to plaintiff's trade dress & get up in
COFFY BITE label / wrapper and pouch / packet;
d) the defendants be ordered to surrender to the plaintiff for
destruction, all containers, pouches, prints, dies, blocks, moulds and
plates, screen prints, packing and advertising materials and any other
material in their possession, bearing the mark COFFEE TOFFEE which
are a substantial reproduction of the plaintiff's trade dress & get up and
copyright in the artistic work COFFY BITE label / wrapper and pouch /
packet amounts to infringement of plaintiff's registered trademark and
copyright therein and amounts to passing off defendants' goods as and
for plaintiff's goods;
e) a preliminary decree be passed in favour of the plaintiff
directing the Defendants to render account of profits made by use of
trademark and artistic work COFFEE TOFFEE label / wrapper and pouch
/ packet and 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;
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f) the defendants be ordered to pay to the plaintiff a sum of
Rs.1,00,000/- as damages for their wrongful and illegal activities by use
of an almost identical trademark COFFEE TOFFEE label and artistic
work COFFEE TOFFEE label pouch / packet and
g) for costs of the suit.
For Plaintiff : Miss.Chandini Pradeepkumar
for Mr.A.A.Mohan
For Defendant : Set exparte
********
JUDGMENT
The plaintiff which is a registered Proprietor of the Trademark
'LOTTE COFFY BITE' seeks injunctive reliefs restraining the defendant
from manufacturing, distributing, marketing, selling, offering for sale,
advertising or in any manner dealing with toffees, chocolates,
confectionery etc., bearing an almost identical trademark 'COFFEE
TOFFEE', with a similar colour scheme for the wrappers, containers,
labels and pouches, restraining the defendant, their representatives etc.,
from infringing the copyright of the plaintiff by making substantial
production of the artistic work, label, pouches and packing materials of
the plaintiff's products, restraining the defendant from passing off their
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product as the product of the plaintiff, a mandatory injunction directing
the defendant to surrender for destruction of containers, pouches, labels
and other packing materials with the deceptively similar trademark
'COFFEE TOFFEE', a preliminary decree for accounts, damages and for
costs.
2. The defendant though served has not entered appearance to
contest the claim.
3. According to the plaintiff, the plaintiff which is the successor in
interest of M/s.Parrys Confectionery Ltd., launched a coffee toffee and
got the trade mark 'COFFY BITE' registered for the label with particular
colour scheme. The registration were done in the year 2005. The
defendant floated its products in the market with a name 'COFFEE
TOFFEE'. The wrappers of the toffee of the defendant were in the same
colour scheme and were also deceptively similar to the colour scheme
and font of the letters adopted by the plaintiff. Claiming that the
defendant is infringing its trademark as well as the copyright, the
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C.S.No.431 of 2012
plaintiff had come to Court seeking aforesaid injunctive reliefs and
damages.
4. One Mr.T.G.Karthikeyan, Constituted Attorney and Company
Secretary of the plaintiff has been examined as PW1. He has filed the
proof affidavit and an additional proof affidavit substantially reproducing
the claims made in the plaint. The certificates of the registration of the
Trademark have been marked as Ex.P3 to Ex.P5, the legal use certificates
have been marked as Ex.P12 to Ex.P14.
5. A perusal of the above documents demonstrates that the
plaintiff is the Proprietor of the Trademark 'COFFY BITE' written in a
particular manner and printed with a particular colour scheme. The
copies of the wrapper and packing material of the defendant has been
produced as Ex.P9 and Ex.P11. A perusal of these documents would
show that the manner in which the letters are written and the colour
scheme of the wrappers and packing materials of the defendant are
substantially similar to that of the plaintiff and are capable of causing
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C.S.No.431 of 2012
confusion in the minds of the consumers, regarding the identity of the
manufacturer. It is also seen that the deceptive similarity would definitely
create a confusion in the minds of the consumer who is a person of
average intelligence with imperfect recollection. There is a very strong
likelihood of the goods of the defendant being passed off as the goods of
the plaintiff, if the injunctive reliefs are not granted. In the light of the
above conclusion, I am of the opinion that the plaintiff is entitled to a
decree as prayed for in the suit.
6. The suit is therefore decreed as prayed for. The plaintiff would
be entitled to costs of the suit also. Consequently, the connected
applications are closed.
18.08.2021
dsa
Index : No
Internet : Yes
Speaking order
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List of the witnesses examined on the side of the plaintiff:
PW1 – Mr.T.G.Karthikeyan
List of Exhibits marked on the side of the plaintiff :
Sl.No Exhibits Description of documents
.
1 Ex.P1 The copy of the power of attorney dated
03.08.2021(The original power of attorney was filed in
Second Appeal No.57789/2020)
2 Ex.P2 The copy of the fresh certificate of incorporation
consequent on change of name.(marked and compared
with original)
3 Ex.P3 The copy of the trademark registration certificate under
No.1364709 in Class 30 for the mark LOTTE COFFY
BITE dated 15.06.2005.(marked and compared with
original)
4 Ex.P4 The copy of the trademark registration certificate under
No.1364710 in Class 30 for the mark LOTTE COFFY
BITE dated 15.06.2005.(marked and compared with
original)
5 Ex.P5 The copy of the trademark registration certificate under
No.1364711 in Class 30 for the mark LOTTE COFFY
BITE dated 15.06.2005 (marked and compared with
original)
6 Ex.P6 The photocopies of Invoices of the plaintiff
7 Ex.P7 The photocopies of sales promotional materials of
LOTTE COFFY BITE.
8 Ex.P8 The specimen of plaintiff's LOTTE COFFY BITE.
9 Ex.P9 The specimen of defendant's COFFEE TOFFEE.
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C.S.No.431 of 2012
Sl.No Exhibits Description of documents
.
10 Ex.P10 The specimen of plaintiff's LOTTE COFFY BITE
pouch / packet.
11 Ex.P11 The specimen of defendant's COFFEE TOFEE pouch /
packet.
12 Ex.P12 The original legal use certificate for trademark
registration certificate under No.1364709 in Class 30
for the mark LOTTE COFFY BITE.
13 Ex.P13 The original legal use certificate for trademark
registration certificate under NO.1364710 in Class 30
for the mark LOTTE COFFY BITE.
14 Ex.P14 The original legal use certificate for trademark
registration certificate under NO.1364711 in Class 30
for the mark LOTTE COFFY BITE.
18.08.2021
dsa
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R.SUBRAMANIAN, J.
dsa
C.S.No.431 of 2012
18.08.2021
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