Madras High Court
Mr.A.D.Padmasingh Isaac vs Naresh Jain on 16 November, 2021
C.S.(Comm.Div.)672 of 2019
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated :16.11.2021
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit (Comm.Div.) No.672 of 2019
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 .. Plaintiffs
/versus/
Naresh Jain
Proprietor,
Jain Spice and Food Products
No.8/139/C, J.P.N. Road,
Hyderabad-500 096
And also at 15-7-18/A/1, 1st Floor,
Kolsawadi, Hyderabad-500 012,
Andhra Pradesh ..Defendant
1/23
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
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 of Spices, Spice powders,
Turmeric powders, Coriander powders and other food products or
other goods using the Trade Mark AARCHI or any other similar
Trade Mark or similar sounding expression or in any media and
use the same in invoices, letter heads and visiting cards or by
using any other trade mark with is in any way visually or
deceptively or phonetically similar to the plaintiffs' trade marks
AACHI and use the same in pouches, spices, spice powders,
Turmeric powders, Coriander powders and other food products or
any other goods or use the mark in invoices, letters heads and
2/23
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
visiting cards or any other trade literature or by using any other
trade mark which is in any way visually, or phonetically similar to
the plaintiffs' registered Trade Mark Nos.838786, 976559,
1025304, 1025305, 1458532, 1479158, 1479159, 1595537,
1690157, 1731915, 1731939, 3370962 & 3371000 or in any manner
infringe the plaintiff's registered Trade Mark
(b) granting a permanent injunction, restraining the
defendant, by itself, its servants, agents, distributors or anyone
claiming through him from manufacturing, selling, advertising
and offering for sale of spices, spice powders, turmeric powders,
coriander powders and other food product, or other goods using
Trade Mark AARCHI and or any other similar Trade Mark 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 way
visually or deceptively or phonetically similar to the plaintiffs'
Trade Mark AACHI in respect of spices, spice powders, turmeric
powders, coriander powders and other food products or use the
3/23
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
mark in invoices, letter heads and visiting cards or any other
trade literature or by using any other trade mark which is in any
way visually, or phonetically similar to the plaintiffs' Trade Mark
AACHI or in any manner pass off the plaintiff's 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 Trade Mark word AARCHI
and label mark or other identical trade mark used in the pouches
and packets bearing the word AACHI and label mark
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark word
AARCHI and label mark on the goods 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 costs
to the suit, and
4/23
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
(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.C.Daniel
For Defendant :Set exparte
------
JUDGMENT
The instant suit has been filed seeking for the relief of
permanent injunction restraining the defendant, his servants,
agents or anyone claiming through the defendant, from
manufacturing, marketing, distributing, offering, advertising for
sale of spices, spice powders, turmeric powders, coriander
powders and other food products or other goods using the trade
mark AARCHI / or any other mark identical or deceptively
similar to the plaintiffs’ registered trade marks AACHI /
and has further prayed for a direction to the defendants
to surrender all the materials bearing the trade mark of the
plaintiffs. The plaintiffs have also sought for a direction to the
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
defendants for rendition of accounts.
2. The case of the plaintiffs pertain to the
infringement of their registered trade mark AACHI /
and passing off of the label marks. The trade mark AACHI was
assigned in favour 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
stated that there are currently 178 registrations of the trade
mark AACHI in various 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
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
become widely famous among the trading community and the
public. It is further claimed by the plaintiffs that they have been
using these marks AACHI with respect to almost all the masala
preparations from the commencement of their business. The
plaintiffs stated that from the year 2016, they introduced new
label marks across their product segments and all their marks got
registered in class 30, unopposed.
3. The grievance of the plaintiffs is that in October
2019, they came across the defendant's product bearing the word
mark AARCHI and label , in the same colour scheme and
get up of the plaintiffs’ trade mark AACHI. It is stated by the
plaintiffs that they are concerned about the label adopted by the
defendant which is visually, phonetically and structurally similar
to the plaintiffs' trade mark and that the defendant’s mark is a
conscious copy of the plaintiffs’ marks which is widely famous
thereby, leading to infringement and passing off of the goods of
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
the defendants as that of the plaintiffs'. The plaintiffs further
stated that they have no objection for the defendant to market
their product under any name other than AARCHI / and
that their objection is only with respect to the copying of the
colour scheme, get up and the label of their mark. The further
grievance of the plaintiffs is that the defendant’s label consists
of their trade mark AARCHI / written prominently inside
a red oval shaped bubble, which the plaintiffs claim as the
imitation of the plaintiff's device of AACHI. The plaintiff also
claimed that the colour scheme used by the defendant is copied
from the plaintiffs, in all the label marks in question, and that
the label is consciously copied from their label with an intention
of taking undue advantage of reaping the benefits without
sowing. The plaintiffs also stated that the use of the red oval
device in respect of the trade mark AACHI is registered in favour
of the plaintiffs’ in nearly all the 45 classes and also registered in
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
117 countries. The plaintiffs further state that the defendant’s
product is inferior in quality and substandard.
4. The defendant was served with the notice and he has
chosen not to contest the suit and hence was called absent and
set ex-parte by this Court through an order dated 09.11.2021.
5. The only issue that arises for consideration in the present
suit is whether the defendant, by using the mark AARCHI /
has infringed the plaintiffs’ trade marks AACHI / and
whether the same is phonetically, visually and structurally
identical to the trade mark of the plaintiffs and as to whether
the plaintiff is entitled for the reliefs sought for in this suit.
6. The manager of the 2nd plaintiff company was
examined-in chief as PW-1 and Exhibits P1 to P16 were marked.
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
7. Heard Mrs. Gladys Daniel, learned counsel for the
plaintiff. This Court has carefully considered the arguments,
pleadings, evidence of PW1 and the documents relied upon by
the Plaintiff.
8. On carefully going through Exhibits P6, P7, P10 and
P11, it can be seen that the plaintiffs are the registered trade
mark owner of the marks AACHI / . It can be seen that
both the marks have distinct identity and are in usage since 1995.
It can also be seen that the marks AACHI / have become
a well-known mark for masala and food products. The defendant
who was aware about the same decided to make use of this mark
for selling the same class of goods. The defendant is passing off
on the goodwill and reputation earned by the plaintiffs. The legal
use certificate/ registration certificate of the plaintiff's trade
mark was marked as Exhibits P7 and P13 respectively. From a
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
careful perusal of Exhibit P13, it is clear that the trade mark
AACHI is registered and that the sole proprietor concern of the
1st plaintiff owns the intellectual property rights of the trade
mark AACHI. From Exhibits P9, P10 and P11, it is clear that the
1st plaintiff continues to use the trade mark AACHI through his
licensees Aachi Spices and Foods Private Limited and the 2nd
plaintiff. From the above-mentioned Exhibits P9, P10 and P11, it
is clear that the 1st plaintiff owns the trade mark AACHI under
various labels and the 2nd plaintiff uses the same. It is very clear
from exhibits marked that the red oval shaped label trade mark
is registered with the plaintiffs.
9. Further, the 1st plaintiff possesses the
international 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 P14. The 1st plaintiff also possesses the international
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
registration (WIPO) under the Madrid protocol, for the trade
mark AACHI device under the same classes in 117 countries and
the same is clear from the documents marked as Exhibits P14
and P15.
10. The Hon’ble Supreme Court in Parle products (P)
LTD v. J.P. And CO. Mysore reported in (1972) 1 SCC 618,
while dealing with the question of deceptive similarity in the
Trade and Merchandise Marks Act, 1958, held that it would
amount to infringement, if the impugned mark bears an overall
similarity to the registered mark. The relevant paragraph from
the judgment is extracted below.
9. It is therefore clear that in order to
come to the conclusion whether one mark
is deceptively similar to another, the
broad and essential features of the two
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
are to be considered. They should not be
placed side by side to find out if there are
any differences in the design and if so,
whether they are of such character as to
prevent one design from being mistaken
for the other. It would be enough if the
impugned mark bears such an overall
similarity to the registered mark as would
be likely to mislead a person usually
dealing with one to accept the other if
offered to him. In this case we find that
the packets are practically of the same
size, the color scheme of the two
wrappers is almost the same; the design
on both though not identical bears such a
close resemblance that one can easily be
mistaken for the other.
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
11. Further, this court in the case of Issac Issac Mathai
v. 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 paragraph 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.
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
61. It is well settled law that when there is 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.
12. Exhibit P16 contains the label of the defendant. A
closer look at the trade mark AARCHI / that is used by the
defendant shows that it is being used for manufacturing and
selling masala and food products, the same class of goods which
the plaintiff’s are dealing with. This mark is structurally,
phonetically and visually similar to the plaintiffs’ trade marks
AACHI / . The defendant has adopted this trade mark
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
only with a view to exploit the commercial goodwill achieved by
the plaintiffs. in fact, an attempt was made by the defendant to
register the trade mark AARCHI under class 30 and an objection
was made by the plaintiffs and ultimately the defendant
abandoned the application. A specific averment has been made
to this effect in the plaint.
13. It must be borne in mind that the consumer who
purchases masala and food products will be in the category of a
man of average intelligence and imperfect recollection. To such
a man, there is absolutely no chance of drawing a distinction
between the plaintiffs’ product and the defendant’s product.
This is not a case of deceptive similarity but one of almost exact
reproduction of the registered trade mark of the plaintiffs. The
defendant is deliberately using the trade mark AARCHI / to
mislead the members of the trade and the general public at large
and he is trying to cash on the goodwill and reputation enjoyed
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
by the plaintiffs. A careful look at the impugned marks blatantly
reveal that it is visually, phonetically and structurally identical to
the plaintiff’s registered trade mark.
14. In the present case, both the parties are involved in
the manufacture of masala and food products. The defendant’s
mark is phonetically, structurally and visually identical to the
plaintiffs’ trade mark and it is bound to cause confusion as both
the products will be made available through the same trade
channels and to the same class of consumers. The above
discussion leads to the conclusion that the mark AARCHI /
used by the defendant has infringed the plaintiffs’ trade marks
AACHI / . Accordingly, the plaintiffs are entitled for the
reliefs sought for in this suit. The issue framed by this court is
answered in favour of the plaintiffs.
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
15. In fine, there shall be a decree for permanent
injunction, restraining the defendant, their servants, agents,
men, or anyone claiming through them from manufacturing,
marketing, distributing, offering or advertising for sale of spices,
spice powders, turmeric powders, coriander powders and other
food products or other goods using the trade mark AARCHI /
or any other mark identical or deceptively similar to the
plaintiff’s registered trade marks AACHI / . There shall be
a further decree directing the defendant to surrender all the
materials bearing the trade mark of the plaintiffs. There shall be
a preliminary decree directing the defendant to render true and
faithful accounts of the profits earned by him by using the
offending trade mark AARCHI / , from the date of filing of
this suit up to the date of the judgement and decree passed in
this suit.
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
16. The suit is decreed by imposing costs of Rs. 50,000/-
payable by the defendant to the plaintiffs.
16.11.2021
Index:Yes/No
Internet : Yes/No
rka
List of Witness examined on the side of the Plaintiffs:-
Mr.B.Gananasambandam – PW.1 Examined in Chief on
16.11.2021.
List of Witness examined on the side of the Defendant :-
-----
List of the Exhibits marked on the side of the Plaintiff:-
Sl. Dated Particulars Parties to Remarks
Nos Document
.
1. - legal use certificate of Plaintiff Photosta
trade mark Nos.838786, t copy
976559, 1025304,
1025305, 1458532,
1479158, 1479159,
1595537, 1690157,
1731915, 1731939,
3370962 & 3371000
2. 30.06.20 Certificate of Plaintiff Photosta
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
Sl. Dated Particulars Parties to Remarks
Nos Document
.
06 incorporation of Aachi t copy
Masala Foods P Ltd.
3. 17.03.20 Certificate of Plaintiff Photosta
10 incorporation of Aachi t copy
Spices and Foods P Ltd.
4. 06.03.20 Memorandum of Plaintiff Photosta
10 Association of Aachi t copy
Spices and Foods P Ltd
5. 28.12.20 Certificate of Plaintiff Photosta
06 Commercial Tax t copy
03.01.20 Registration and Central
07 Sales Tax of Aachi Spices
& Foods
6. 10.07.20 Certificate of Plaintiff Photosta
06 Commercial Tax t copy
Registration of Aachi
Masala & Foods (P) Ltd
7. 01.12.20 Deed of Assignment Plaintiff Photosta
06 between Abishek t copy
Enterprises and Aachi
Masala Food Pvt. Ltd.
8. 01.12.20 Deed of Assignment Plaintiff Photosta
06 between Naveen t copy
Products and Aachi
Masala Foods Pvt. Ltd.
9. 30.03.20 Deed of Assignment Plaintiff Photosta
07 between Aachi Masala t copy
Foods Pvt Ltd and
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
Sl. Dated Particulars Parties to Remarks
Nos Document
.
Mr.A.D.Padmasingh
Isaac trading as Aachi
Spices and Foods
10. 31.03.20 Dissolution Deed Plaintiff Photosta
07 between Mrs.Rani t copy
Pandian and the
Mr.A.D.Padmasingh
Isaac dissolving the
partnership firm,
Naveen Products
11. 01.04.20 Trade Mark License user Plaintiff Photosta
07 Agreement between t copy
Mr.A.D.Padmasingh
Isaac trading as Aachi
Spices and Foods and
Aachi Masala Foods Pvt
Ltd
12. 21.04.20 Trade Mark License user Plaintiff Photosta
10 Agreement between t copy
Mr.A.D.Padmasingh
Isaac and Aachi Spices
and Foods Pvt Ltd
13. 21.04.20 Trade Mark License user Plaintiff Photosta
10 Agreement between t copy
Mr.Mr.A.D.Padmasingh
Isaac and Aachi Masala
Foods P Ltd
14. - List of Products Plaintiff Photosta
manufactured and t copy
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
Sl. Dated Particulars Parties to Remarks
Nos Document
.
marketed by the
plaintiffs bearing the
trademark AACHI
15. - Registration certificates Plaintiff Photosta
of the mark AACHI in t copy
various countries around
the world
16. 08.05.20 Madrid Protocol Plaintiff Photosta
17 Registration in classes t copy
29, 30, 43 with respect
to the Trademark AACHI
designating 107
countries valid and
subsisting as on date
17. Dec Plaintiffs Advertisement Plaintiff Photosta
2006 in RITZ Magazine t copy
18. - Defendant's Product Defendant
Colour
Xerox
List of the Exhibits marked on the side of the Defendants:-
--------
N.ANAND VENKATESH. J.,
rka
https://www.mhc.tn.gov.in/judis
C.S.(Comm.Div.)672 of 2019
C.S.No.672 of 2019
16.11.2021
https://www.mhc.tn.gov.in/judis
