Madras High Court
Mr.A.D.Padmasingh Isaac vs C/O.Tidel Park on 2 December, 2021
C.S.(Comm.Div.) 125 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 02.12.2021
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit (Comm.Div.) No.125 of 2020
1. Mr.A.D.Padmasingh Isaac
Proprietor,
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
3. M/s.Heavenly Foods P Ltd.,
Plot No.1926, 34th Street,
I Block, Ishwarya Colony,
Anna Nagar West,
Chenni – 600 040
Represented by its Director,
Mrs.Shiny Ashwin .. Plaintiffs
/versus/
Chettinadu Aachi Samaiyl
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C.S.(Comm.Div.) 125 of 2020
C/o.Tidel Park
No.4 Rajiv Gandhi Salai,
Taramani, Chennai 600 113
and Also at
No.29, 5th Street,
New Colony, Adambakkam,
Chennai 600 088
and also at
No.65, 5th street,
Balakrishnapuram,
Adambakkam,
Chennai 600 088 ..Defendant
Prayer: Civil Suit has been filed under Order IV, Rule 1 of the
Original Side Rules and Order VII, Rule 1 of the C.P.C. Read with
Sections 27(2), 29, 134 & 135 of the Trade Marks Act, 1999,
praying to pass a judgment and decree for:-
(a) granting a permanent injunction, restraining the
defendant, by itself, their servants, agents, distributors, or
anyone claiming through them from manufacturing, selling,
advertising and offering for sale using the name CHETTINADU
AACHI SAMAIYAL or any other similar trade mark name or similar
sounding expression in any media and use the same in name
board, invoices, letter heads and visiting cards or by using any
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C.S.(Comm.Div.) 125 of 2020
other trade mark/ name which is in any way visually or
deceptively or phonetically similar to the 1st plaintiffs trade
mark/name AACHI/AACHI CHETINAD RESTAURANT/AACHI
KITCHEN and use the same in pouches, packets or use the mark
in invoices, letters heads and visiting cards or part of their
restaurant name any other trade literature or menu card any
food preparation by using any other trade mark which is in any
way visually, or phonetically similar to the plaintiffs registered
Trade mark Nos.838786, 1116254, 1479159, 1715718 & 2965624 or
in any manner infringing the 1st plaintiffs registered trade marks
referred herein.
(b) granting a permanent injunction, restraining the
defendant, by itself, its agents or servants or anyone claiming
through or under him any business marketing, selling advertising
using in trade literature, menu cards, invoices, name boards,
website, Internet advertisements the mark/name CHETTINADU
AACHI SAMAIYAL in relation to the Restaurant or with respect to
or any other food preparation or on any other business the
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C.S.(Comm.Div.) 125 of 2020
impugned trademark / name which is any manner deceptively or
phonetically confusingly similar to the plaintiffs trade
mark/name AACHI/AACHI CHETTINAD RESTAURANT/ AACHI
KITCHEN or in any other manner pass off their hotel, business or
goods as and for that of the plaintiffs.
(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 CHETTINADU AACHI
SAMAIYAL or other identical trade mark used in the pouches and
packets bearing the work AACHI/AACHI HOTEL/AACHI CHETTINAD
RESTAURANT /AACHI KITCHEN.
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark
CHETTINADU AACHI SAMAIYAL on the service referred and
decree the suit for the profits found to have been made by the
defendant, after the defendant has rendered accounts.
(e) directing the defendant to pay to the plaintiffs the
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C.S.(Comm.Div.) 125 of 2020
costs to the suit, and
(f) pass such further or other order, as this Hon'ble Court
may deem fit and proper in the circumstances of the case and
thus render justice.
For Plaintiffs :Mr.Gladys Daniel
For Defendant :Set exparte
------
JUDGMENT
The present suit has been filed seeking for the relief
of permanent injunction, restraining the defendant, his servants
or anyone claiming through the defendant from manufacturing,
selling, offering and advertising for sale adopting the name
CHETTINADU AACHI SAMAIYAL or any other trade mark name or
any name with a similar sounding expression in any media or by
using any other trade mark and/or name which are visually,
phonetically or deceptively similar to the 1st plaintiff’s
registered trade mark/name AACHI / AACHI CHETTINAD
RESTAURANT/ AACHI KITCHEN/ and the
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C.S.(Comm.Div.) 125 of 2020
plaintiffs have also prayed for a direction to the defendant, to
surrender all the materials including the advertising materials,
pouches, packets and hoardings bearing the name CHETTINADU
AACHI SAMAIYAL/
or any other word identical to the plaintiffs’ names
AACHI’/ AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN. The
plaintiffs have also sought for a direction to render the account
of profits to the defendant.
2. The case of the plaintiffs is with respect to the
infringement of their registered trade mark AACHI and AACHI
CHETTINAD RESTAURANT. The trade mark AACHI was assigned
in favor of the 1st plaintiff by one registered proprietary concern
called the Aachi Masala Foods (P) on 30.03.2007. The plaintiffs
state that, in the year 1999, the trade mark AACHI was first
applied for and registered in the name of the 1st plaintiff trading
as Naveen products. The plaintiffs also state that there are
currently 178 registrations of the trade mark AACHI in various
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C.S.(Comm.Div.) 125 of 2020
words, labels and stylized marks and the 1st plaintiff also
acquired international registration (WIPO) under the Madrid
protocol for the trade mark AACHI word and device under classes
29, 30 and 43 in 107 and 117 designated countries respectively. It
is claimed by the plaintiffs that the label marks as a whole have
been in use since 1995 and that they have become widely famous
among the trading community and the public. The plaintiffs
further state that the 3rd plaintiff is the licensee of the 1st
plaintiff to exploit the registered trademarks AACHI KITCHEN/
and AACHI CHETTINAD RESTAURANT and that
the 1st plaintiff obtained the registration of the trade mark
AACHI CHETTINAD RESTAURANT in respect of food preparations
for human consumption such as coffee, tea, cocoa, sugar, rice,
tapioca, sago, coffee substitutes, flour, and preparations made
from cereals, bread, biscuits, cakes, pastry, confectionery and
ice. With respect to the mark AACHI KITCHEN, the plaintiffs
state that the 1st plaintiff obtained the registration in respect of
restaurants, providing of food and drink, temporary
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C.S.(Comm.Div.) 125 of 2020
accommodation, canteen, catering, self service restaurants, fast
food restaurants and snack bars.The plaintiffs also state that
they have now become one of the leading manufacturers of
packaged masala products and that the mark AACHI has become
synonymous with the goods produced by them and none else in
the market.
3. The grievance of the plaintiffs is that in November
2019, they stumbled upon the defendant's hotel under the name
CHETTINADU AACHI SAMAYAL/ . The plaintiffs state
that they are perturbed by the defendant’s restaurant name
which is a total copy of the plaintiffs’ registered trade mark.
Plaintiff’s statethat the defendants are reaping benefits without
sowing and they’re taking an undue advantage of the plaintiffs’
mark.Plaintiff’s also claim that thedefendant’s service is of
inferior quality and substandard. The plaintiffs further claim that
the defendant’s offending mark is visually and phonetically
similar to the plaintiffs' trade mark and that the defendant’s
mark is a conscious copy of the plaintiffs’ marks which is widely
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C.S.(Comm.Div.) 125 of 2020
famous, thereby leading to passing off of the defendant’s service
as that of the plaintiffs.
4. The defendant choose not to enter appearance in
this suit and defend their case and hence, was called and set
exparte by this Court on 25.10.2021.
5. The only issue that arises for consideration in the
present suit is whether the defendant, by using the mark
CHETTINADU AACHI SAMAYAL/ has infringed the
plaintiff’s trademarksAACHI / AACHI CHETTINAD RESTAURANT /
AACHI KITCHEN/ and whether the same is phonetically
and visually similar to the trade mark of the plaintiffs and as to
whether the plaintiffs are entitled for the reliefs sought for in
this suit.
6. The General Manager of the 2nd plaintiff company
was examined-in-Chief as PW-1 on 26-11-2021 and exhibits P-1 to
P-25 were marked.
7. Heard Mrs. Gladys Daniel, learned counsel for the
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C.S.(Comm.Div.) 125 of 2020
plaintiff and carefully perused the documents relied upon by the
Plaintiff.
8. On carefully going through Exhibit P 16 (Legal use
certificate of Trade mark No. 838786), it can be seen that the
plaintiffs are the registered trade mark owner of the word mark
AACHI. It can be seen that the word mark has a distinct identity
and has been in usage since 1995. It can also be seen that the
mark AACHI has become a well-known mark for masala and food
products. On going though Exhibit P 17(Legal use certificate of
Trade mark No. 1116254), it is evident that the 1st plaintiff is
the owner of the trade mark AACHI CHETTINAD RESTAURANT
and from Exhibits P 19 and P20((Legal use certificate of Trade
mark Nos. 1715718 and 2965624 respectively)it is clear that the
1st plaintiff is the owner of the registered trade mark AACHI
KITCHEN and the label. From perusing Exhibit P18 (Legal use
certificate of Trade mark No. 1479159), it is evident that the 1st
plaintiff has also obtained registration for the mark AACHI in
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C.S.(Comm.Div.) 125 of 2020
Tamil. A perusal of Exhibits P21, P22 and P23, reveal that the
3rd plaintiff is the licensee and has been using the trade mark
AACHI KITCHEN since the year 2014. Further, the 1st plaintiff
possessesinternational registration (WIPO) under the Madrid
protocol for the trade mark AACHI word under classes 29, 30 and
43 in 107 countries and the same is clear from the document
marked as Exhibit P15.
9. It is clear after going through the above-mentioned
Exhibits that the defendant's hotel CHETTINADU AACHISAMAYAL
is identical to the plaintiffs’ mark AACHI CHETTINAD
RESTAURANT and indeed these two marks are visually and
phonetically similar. The plaintiffs are prior users of the
registered trademarksAACHI / AACHI CHETTINAD RESTAURANT
/ AACHI KITCHEN. Hence, the use of the hotel name
CHETTINADU AACHI SAMAYAL by the defendant amounts to
infringement and passing off.
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C.S.(Comm.Div.) 125 of 2020
10. This Court in the case of ISSAC ISAAC Mathai
vs.Sowkhya Way2health P. Ltd. reported in
MANU/TN/2823/2013 held that adding of one or two words in a
mark does not make any difference as far as phonetic similarity
is concerned. The relevant paragraphs from the judgment is
extracted below:
60. It may also be noticed here that act of the
defendant/respondent is not bonafide, though
they are claiming to use the trademark
"SOUKYA WAY2HEALTH", but in all their letter
heads and other documents displayed
"SOWKHYA" prominently, whereas
"WAY2HEALTH" is not that prominent. Besides,
e-mail address is also deceptively similar to
that of the plaintiffs/applicants, i.e.,
www.sowkhya.com.
61. It is well settled law that when there is
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C.S.(Comm.Div.) 125 of 2020
phonetic similarity between the two names,
then adding of one or two words does not
make it distinct from similarity. It can
therefore, be safely said that the
defendants/respondents have deliberately
infringed the registered trademark of the
plaintiffs/applicants.
11. Exhibit P25 contains the label of the defendant. A
mere look at the trade mark ‘CHETTINADU AACHI SAMAYAL’/
that is used by the defendant shows that it is a
conscious copy of the plaintiff’s registered trademark. This mark
is phonetically and visually similar to the plaintiff’s trademarks
‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN' .
The defendant has adopted this trademark only with a view to
exploit the commercial goodwill achieved by the plaintiffs.
12. It must be borne in mind that the consumer who
avails the services of these restaurants will be in the category of
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C.S.(Comm.Div.) 125 of 2020
a man of average intelligence and imperfect recollection. To
such a man, there is absolutely no chance of drawing a
distinction between the Plaintiff’s and the Defendant’s
restaurant. This is not a case of deceptive similarity but one of
exact reproduction of the Plaintiff’s registered trademark. The
Defendants are deliberately using the trademark“CHETTINADU
AACHI SAMAYAL’ to mislead the general public at largeand they
are trying to cash in on the goodwill and reputation enjoyed by
the Plaintiffs. A careful look at the impugned marks blatantly
reveal that it is visually and phonetically identical to the
Plaintiff’s registered trade mark. In view of the same, there is
absolutely no doubt in the mind of this Court that the Plaintiffs
are entitled to the reliefs sought for by them.
13. In the present case, both the parties are involved in
the restaurant business. The defendant’s mark is phonetically
and visually identical to the plaintiff’s trade mark and it is bound
to cause confusion as both the services will be availed by the
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C.S.(Comm.Div.) 125 of 2020
same class of consumers. The above discussion leads to the
conclusion that the mark “CHETTINADU AACHI SAMAYAL’/
used by the defendant has infringed the plaintiff’s
trademarks ‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI
KITCHEN/
. Accordingly, the plaintiff is entitled for the reliefs
sought for in this suit. The issue is answered accordingly.
14. In fine, there shall be a decree for
(a) permanent injunction, restraining the
defendant, by itself, their servants, agents, men, or anyone
claiming through them ‘from manufacturing, marketing,
distributing, offering and advertising for sale adopting the name
CHETTINADU AACHI SAMAIYAL/ or any other trade mark name or
any name with a similar sounding expression in any media or by
using any other trade mark and/or name which are visually,
phonetically or deceptively similar to the 1st plaintiff’s
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C.S.(Comm.Div.) 125 of 2020
registered trade mark/name AACHI / AACHI CHETTINAD
RESTAURANT/ AACHI KITCHEN/ .
(b) There shall be a direction directing the
defendant to surrender all the materials bearing the trade mark
of the Plaintiff.
(c) There shall be a preliminary decree directing
the defendant to render true and faithful accounts of the profits
earned by them by using the offending trade mark
‘CHETTINADU AACHI SAMAYAL/ ”, from the date of
filing of this suit up to the date of the judgement and decree
passed in this suit.
15. The suit is decreed by imposing a cost of Rs.25,000/-
payable by the defendant to the plaintiff.
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C.S.(Comm.Div.) 125 of 2020
Index:Yes/No
Internet : Yes/No
rka
List of Witness examined on the side of the Plaintiffs:-
PW1 examined in Chief on 26.11.2021.
List of Witness examined on the side of the Defendant :-
-----
List of the Exhibits marked on the side of the Plaintiff:-
Sl. Particulars Remarks
Nos
.
1. Authorisation letter Photostat copy
2. Print out of the list of products Photostat copy
manufactured and marketed by
the plaintiffs bearing the
trademark AACHi
3. Certificate of incorporation of
Aachi masala Foods P ltd dated
30.06.2006
4. Certificate of Commercial Tax
Registration of Aachi Masala
&Foods P Ltd dated 10.07.2006
5. Dissolution deed between Mrs.Rani
Pandian and Mr.A.D.PAdmasingh
Isaac dissolving the partnership
firm, naveen products dated
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C.S.(Comm.Div.) 125 of 2020
Sl. Particulars Remarks
Nos
.
31.03.2007
6. Certificate of commercial tax
registration and central sales tax
of Aachi spices and Foods dated
28.12.2006 and 03.01.2007
7. Trade mark license user
agreement between
Mr.A.D.PAdmasingh Isaac trding as
Aachi spices and foods and aachi
masala Foods P ltd dated
01.04.2007
8. Memoramdum of Association of
Aachi spices and Foods P ltd dated
06.03.2010
9. Certificate of Incorporation of
Aachi spices and Foods P Ltd dated
17.03.2010
10. Trade Mark License user
agreement between
MR.A.D.Padmasingh Isaac and
Aachi spices and Foods P Ltd dated
21.04.2010
11 Trade mark license user
Agreement between
Mr.A.D.Padmasingh Isaac and
Aachi Masala Foods P ltd dated
21.04.2010
12. Print out of the Certificate of
Incorporation of M/s.Heavenly
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C.S.(Comm.Div.) 125 of 2020
Sl. Particulars Remarks
Nos
.
Foods P ltd and Memorandum and
articles of Association.
13. Certified copy of Plaintiffs
Advertisement in RITZ Magazine
14. Registration certificates of the
mark Aachi in various countries
around the world.
15. Madrid Protocol Registration in
Classes 29, 30, 43 with respet to
the Trademark Aachi (word)
designating 107 countries valid and
subsisting as on date
16. Legal use certificate of Trade Mark
No.838786 in Class 30, dated
29.01.1999
17. Legal use certificate of Trade
mark No.1116254 in class 30, dated
03.07.2002
18. Legal use certificate of the Trade
mark No.1479159 in class 30,dated
30.07.2008
19. Legal use certificate of the Trade
Mark No.1715718 in class 43 dated
30.07.2008
20. Legal use certificate of the trade
mark No.2965624 in Class 43 dated
18.05.2015.
21. Trade mark license under
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C.S.(Comm.Div.) 125 of 2020
Sl. Particulars Remarks
Nos
.
Agreement between
MR.A.D.PAdmasingh Isaac, Aachi
Spices and Foods and Heavenly
Foods p ltd dated 11.08.2014
P22 Aachi Kitchen's name board
.
P23 Aachi Kitchen's menu card
.
P24 Print out of the order passed by
. Trademark Trial and Appellate
board, United states patent and
Trade mark office dated
13.09.2016
P25 Defendant's name board
. Chettinadu Aachi samaiyal and
Internet copy
List of the Exhibits marked on the side of the Defendants:-
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C.S.(Comm.Div.) 125 of 2020
N.ANAND VENKATESH. J.,
rka
C.S.No.125 of 2020
02.12.2021
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