Madras High Court
Mr. A.D.Padmasingh Isaac vs Paramakudi on 16 November, 2021
C.S. 373 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated :16.11.2021
Coram:
THE HONOURABLE JUSTICE N.ANAND VENKATESH
C.S No.373 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-600040.
2. M/s.Aachi Masala Foods Private Limited
No.1926, 34th Street, I Block,
Ishwarya Colony, Anna Nagar West,
Chennai-600040.
Represented by its Director
Mr. Ashwin Pandian.
.... Plaintiffs
/versus/
K.Lakshmanan
Proprietor,
AVM Masala
No.5 /43, Gandhiji Road,
Paramakudi
Ramanathapuram District-623707
And also at
5/566, Sidco Industrial Estate
Nenmeni village,
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C.S. 373 of 2020
Paramakudi
Ramanathapuram District - 623707
.... Defendant
Prayer: Plaint 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 and 135
of the Trade Mark Act, 1999.
The Plaintiffs, therefore, pray for a Judgment and Decree for :
(a) granting a permanent injunction, restraining the Defendant, by
itself, its servants, agents, distributors, or anyone claiming through
them from manufacturing, selling, advertising and offering for sale
using same or similar label, get up, and colour scheme used by the
Defendant shown in Document No.2 or in relation to chilli powder,
cumin powder, fennel powder, pepper powder, rasam powder, sambar
power, coriander powder, idly chilly powder, lemon rice powder,
kulambu chilli powder, chicken fry mix powder, mutton masala, egg
curry masala, and fish curry masala or any masala items and use the same
pouches, packets of masalas and spices or any other goods or by using
any other Trademark which is in any way visually, and deceptively
similar to the Plaintiffs' label marks' label as shown in Document No.1
or device of “AACHI” registered under No. 1595537 or in any manner
infringe the Plaintiffs' registered Trademarks under No's 3352398,
3352399, 3352400, 3352401, 3352402, 3352403, 3352404 & 3352405.
(b) granting a permanent injunction, restraining the Defendant, by
itself, its servants, agents, distributors, or anyone claiming through them
from manufacturing, selling, advertising and offering for sale using same
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or similar get up, and colour scheme used by the Defendant shown in
Document No. 2 or by using any other trade mark which is in any way
visually or deceptively similar to the Plaintiffs' Trademark “AACHI”
label as shown in Document No. 1 or device of AACHI in relation to
any masala items and use the same pouches, packets of chilli powder,
cumin powder, fennel powder, pepper powder, rasam powder, sambar
powder, coriander powder, idly chilly powder, lemon rice powder,
kulambu chilly powder, chicken fry mix powder, mutton masala, egg
curry masala, and fish curry masala, masalas and spices or any other
goods 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 and deceptively similar to the Plaintiffs' Trademarks as
shown in Document No.1 or AACHI in any manner pass of 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 'AVM' and packets in the Color Scheme and
Get up as shown in Document No.2 or other deceptively similar trade
mark used in the pouches and packets in respect of masalas.
(d) directing the Defendant to render an account of profits made by
them by the use of the impugned Trademark AVM and get up as shown
in Document No.2 on the goods referred and decree the suit for the
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C.S. 373 of 2020
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
(f) pass further or other order, as this Hon'ble Court may deem fit
and proper in the circumstances of the case and thus render jusstice.
For Plaintiffs : M/s.C.Daniel
For Defendant : Set exparte
------
JUDGMENT
The present suit is filed seeking for the relief of permanent
injunction restraining the defendant from using pouches which are deceptively
similar in respect of chilly powder, sambar powder, rasam powder, chicken
65/kabab fry mix powder, mutton masala, kulambu chilly powder, lemon rice
powder, idli chilly powder cumin powder, fennel powder, coriander powder,
egg curry masala, fish curry masala and pepper powder; for an order restraining
the defendant, his servants agents distributors or anyone claiming through them
from manufacturing selling advertising and offering for sale using the same or
similar get up and colour scheme used by the defendant; a direction to the
defendant to surrender the packing material cartons, advertisement materials
and hoardings, letterheads, visiting cards, office stationery and all other
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C.S. 373 of 2020
materials containing/bearing the name AVM and packets in the colour scheme
and get up; and for rendering of account of profits made by the defendant by
the use of the impugned trade mark AVM and getup.
2. The case of the plaintiffs pertain to the infringement of the device of
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 state
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 used by the plaintiffs from the year 2016 and that they have 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 state that from the year 2016, they introduced new label
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marks across their product segments and all their marks got registered in class
30, unopposed.
3. The grievance of the plaintiffs is that in November 2020, they came
across the defendant's turmeric powder, chilly powder, cumin powder, fennel
powder, pepper powder, rasam powder, sambar powder, coriander powder, idli
chilly powder, lemon rice powder, kulambu chilly powder, chicken fry mix
powder, mutton masala, egg curry masala and fish curry masala, under the trade
mark AVM, 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 and deceptively similar to the
plaintiffs' trade mark and that the defendant mark is a conscious copy of the
plaintiffs’ marks which is widely famous, thereby, leading to infringement and
passing off of the goods of the defendant's for that of the plaintiff’s. The
plaintiffs further state that with respect to the use of the word mark AVM, they
have no objection 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 AVM
written prominently inside a red oval shaped bubble, which the plaintiffs claim
as an imitation of the plaintiffs’ device of AACHI. The plaintiff also claimed
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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 further stated that the defendant product is
inferior in quality and substandard. 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 117 countries.
The plaintiffs also state that the intricate floral print in many of their spice and
spice mixtures is consciously copied by the defendants, which amounts to
infringement and passing off.
4. The defendants were served with notice. They did not choose to
contest the suit and they were set ex-parte.
5. The only issue that is to be considered is whether the labels of the
defendant is visually and deceptively similar to that of the plaintiffs' label
marks and whether the act of the the defendant is motivated by malafide
intention to poach upon the reputation and goodwill enjoyed by the plaintiff and
whether the plaintiffs are entitled for the reliefs sought for by them.
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6. On 06.10.2021, the General Manager, Legal and Statutory, of the 2nd
plaintiff’s company was examined as PW1 and Exhibits P1 to P21 were
marked.
7. Heard M/s.Gladys Daniel, learned counsel for the plaintiffs. This
Court has carefully considered the arguments, pleadings, evidence of
PW1 and the documents relied upon by the Plaintiff.
8. This Court, by an order dated 16.12.2020 in O.A. Nos. 692 and 693 of
2020, granted an interim injunction. This order was subsequently made absolute
on 15.07.2021. Hence, there is already an order of injunction acting against the
defendant.
9. From a careful perusal of Exhibit 19, 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
P 10, 11, 12 & 13, 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 Exhibit P10, it is clear that the
1st plaintiff owns the trade mark of AACHI under various labels and the 2nd
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plaintiff uses the same. Schedule B of Exhibit P10 lists various marks, their
registered application numbers and the class in which they belong to. From the
same Exhibit P10, it is very clear that the red oval shaped label trade mark is
registered with the plaintiffs.
10. 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. The same is clear from the document marked as
Exhibit P16. The 1st plaintiff also possesses the international 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 document marked
as exhibit P16.
11. In order to decide on the question of deceptive resemblance, useful
reference can be made to the judgment of the Hon’ble Supreme Court in
Amritdhara Pharmacy v. Satya Deo Gupta reported in AIR 1963 SC 449.
The Hon’ble Supreme Court has held that there are two important questions
which require to be considered in cases of this nature. One, who are the persons
for whom the resemblance is likely to deceive or confuse and two, what rules of
comparison ought to be adopted in judging whether such resemblance exists.
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Applying this principle to the present case, it is not in dispute that both the
plaintiffs’ and the defendant’s products AACHI masala and AVM are used in
respect of the same description of goods, masala and spices namely chilly
powder, sambar powder, rasam powder, chicken 65/kabab fry mix powder,
mutton masala, kulambu chilly powder, lemon rice powder, idli chilly powder
cumin powder, fennel powder, coriander powder, egg curry masala, fish curry
masala and pepper powder. Both the party’s products fall under the same
description, and are used in the households for cooking. These products are
purchased by both literate and illiterate people. The plaintiff's label marks as a
whole, AACHI, is widely famous among the public. The word AACHI and
AACHI’s products, especially their masalas, are well-known. The plaintiffs
continue to enjoy a reputation over their registered trade mark from the year
1995. It is therefore clear that the persons who will be deceived or confused are
the regular consumers who use these products on a daily basis. In so far as the
second test is concerned, the resemblance is with respect to the colour scheme,
get up and the label used by the defendant. The defendant engraves his trade
name inside a red oval shaped bubble which is nothing but the imitation of the
plaintiff’s device of AACHI. Therefore, there is an obvious resemblance that
exists between the products of the plaintiffs and the offending products sold in
the market by the defendant.
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12. 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 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
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identical bears such a close resemblance that one can easily be
mistaken for the other.
13. The red oval device- From the point of view of a man of average
intelligence and imperfect recollection, the common person remembers the
plaintiffs’ products AACHI with the name AACHI being placed in the product
pouch, inside the red oval device. By consciously adopting the red oval device
in their products, the defendant has infringed the trade mark of the plaintiffs.
The colour scheme and get up- by using this same colour scheme of the
plaintiffs’, like red for the chili powder, green and white for the sambar
powder, the blue and white for the rasam powder and so on and so forth, the
defendant's have consciously copied the colour scheme and the get up off the
plaintiffs' products.
The floral pattern- It is claimed by the plaintiffs that the intricate floral pattern
in many of their spices and spice mixtures were introduced in the year 2016 and
the defendant has copied the same. The defendant through his act is trying to
ride on the goodwill and the reputation of the plaintiffs.
14. The conspectus of the above discussion leads to the only conclusion
that the defendant has consciously copied the colour scheme, getup and the
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label of the plaintiffs and has attempted to mislead the general public and take
advantage of the reputation and goodwill of the plaintiffs. In view of this
finding, the issue framed by this court is answered in favour of the plaintiffs.
15. In the result, there shall be a judgment and decree as follows:-
A. A decree for permanent injunction, restraining the defendant,
his servants, agents, distributors, or anyone claiming through
them from manufacturing, selling, advertising and offering for
sale using same or similar label, get up, and colour scheme used
by the defendant or in relation to chilly powder, cumin powder,
fennel powder, pepper powder, rasam powder, sambar powder,
coriander powder, idly chilly powder, lemon rice powder,
kulambu chilly powder, chicken fry mix powder, mutton masala,
egg curry masala, and fish curry masala' or any masala items and
use the same pouches, packets of masalas and spices or any other
goods or by using any other trade mark which is in any way
visually, and deceptively similar to the Plaintiffs' label marks,
label or device of AACHI.
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B. A decree for permanent injunction, restraining the
defendant, his servants, agents, distributors, or anyone claiming
through them from manufacturing, selling, advertising and
offering for sale using same or similar get up, and colour scheme
used by the defendant or by using any other trade mark which is
in any way visually or deceptively similar to the plaintiffs' trade
mark AACHI label and device of AACHI in relation to any
masala items and use the same pouches, packets of chilli powder,
cumin powder, fennel powder, pepper powder, rasam powder,
sambar powder, coriander powder, idly chilly powder, lemon rice
powder, kulambu chilly powder, chicken fry mix powder, mutton
masala, egg curry masala, and fish curry masala, masalas and
spices or any other goods or use the mark in invoices, letters
heads and visiting cards or any other trade literature or by using
any other trade mark which is in any way visually and deceptively
similar to the plaintiffs trade marks AACHI or in any manner
pass off the plaintiffs’ goods.
C. A decree directing the defendant to surrender to the
plaintiffs, all the packing material, cartons, advertisement
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materials and hoardings, letter-heads, visiting cards, office
stationery and all other materials containing/bearing the name
'AVM' and packets in the color scheme and get up or any other
deceptively similar trade mark used in the pouches and packets in
respect of masalas.
D. Considering the facts and circumstances of the case,
rendition of accounts is not necessary for the present case.
18. The suit is allowed with costs of Rs. 25, 000 /- payable by the
defendant to the plaintiffs.
16.11.2021
Index:yes/no
rka
List of Witness examined on the side of the Plaintiffs:-
----
List of Witness examined on the side of the Defendant :-
-----
List of documents filed along with the plaint under Order XI Rule 1 CPC, 1908 as
amended by Act 4 of 2016
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C.S. 373 of 2020
Sl. Date Particularas Parties to Remarks
Nos. Document
1. - Plaintiffs' Label Plaintiffs Print out
2. - Defendant's Label Defendant Print out
3. 14.07.2013 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 1595537 copy
in Class 30, dated
28.08.2007
4. 30.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352398 copy
in Class 30, dated
02.09.2016
5. 12.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352399 copy
in Class 30, dated
02.09.2016
6. 12.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352400 copy
in Class 30, dated
02.09.2016
7. 12.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352401 copy
in Class 30, dated
02.09.2016
8. 09.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352402 copy
in Class 30, dated
02.09.2016
9. 02.06.2017 Registration certificate of Plaintiffs Photostat
Trade Mark No. 3352403 copy
in Class 30, dated
02.09.2016
10. 09.06.2017 Legal use certificate of Plaintiffs Photostat
Trade Mark No. 3352404 copy
in Class 30, dated
02.09.2016
11. 12.06.2017 Legal use certificate of Plaintiffs Photostat
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C.S. 373 of 2020
Sl. Date Particularas Parties to Remarks
Nos. Document
Trade Mark No. 3352405 copy
in Class 30, dated
02.09.2016
12. 30.06.2006 Certificate of Plaintiffs Photostat
incorporation of Aachi copy
Masala Foods P Ltd.
13. 17.03.2010 Certificate of Plaintiffs Photostat
incorporation of Aachi copy
Masala and Foods P Ltd.
14. 06.03.2010 Memorandum of Plaintiffs Photostat
Association of Aachi copy
Spices and Foods P Ltd.
15. 28.12.2006 Certificate of Plaintiffs Photostat
Commercial Tax copy
03.01.2007
Registration and Central
Sales Tax of Aachi
Spices & Foods
16. 10.07.2006 Certification of Plaintiffs Photostat
Commercial Tax copy
Registration of Aachi
Masala & Foods (P) Ltd
17. 01.12.2006 Deed of Assignment Plaintiffs Photostat
between Abishek copy
Enterprises and Aachi
Masala Foods Pvt.Ltd.
18. 01.12.2006 Deed of Assignment Plaintiffs Photostat
between Naveen Products copy
and Aachi Masala Foods
Pvt. Ltd.
19. 30.03.2007 Deed of Assignment Plaintiffs Photostat
between Aachi Masala copy
Foods Pvt Ltd and Mr.
A.D.Padmasingh Isaac
trading as Aachi Spices
and Foods.
20. 31.03.2007 Dissolution Deed Plaintiffs Photostat
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C.S. 373 of 2020
Sl. Date Particularas Parties to Remarks
Nos. Document
between Mrs. Rani copy
Pandian and the Mr.
A.D.Padmasingh Isaac
dissolving the partnership
firm, Naveen Products
21. 01.04.2007 Trademark License user Plaintiffs Photostat
Agreement between Mr. copy
A.D.Padmasingh Isaac
trading as Aachi Spices
and Foods and Aachi
Masala Foods Pvt Ltd
22. 21.04.2010 Trademark License user Plaintiffs Photostat
Agreement between Mr. copy
A.D.Padmasingh Isaac
and Aachi Spices and
Food Pvt Ltd
23. 21.04.2010 Trademark License user Plaintiffs Photostat
Agreement between Mr. copy
A.D.Padmasingh Isaac
and Aachi Masala Foods
P Ltd
24. 04.03.2020 Trademark License user Plaintiffs Photostat
Agreement between Mr. copy
A.D.Padmasingh Isaac
and Aachi Masala Foods
P Ltd
25. 04.03.2020 Trademark License user Plaintiffs Photostat
Agreement between Mr. copy
A.D.Padmasingh Isaac
and Aachi Masala Foods
P Ltd
26. Dec 2006 Plaintiffs' Advertisement Plaintiffs Photostat
in RITZ Magazine copy
27. - List of Products Plaintiffs Print out
manugactured and
marketed by the Plaintiffs
bearing the trademark
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C.S. 373 of 2020
Sl. Date Particularas Parties to Remarks
Nos. Document
AACHI
28. - Registration Certificates Plaintiffs Photostat
of the mark AACHI in copy
various countries around
the world
29. 29.11.2018 Madrid Protocol Plaintiffs Photostat
Registration in classes copy
06.08.2020
29,30,43 with respect to
the Trademark AACHI
(Word) & --( Device)
designating 107 & 117
countries valid and
subsisting as on date
30. 02.03.2017 Chartered Accountant Plaintiffs Photostat
Certificates copy
20.07.2020
31. 02.04.2019 Board Resolution 2nd Plaintiff Original
32. 03.12.2020 Affidavit of Plaintiffs Original
Mr.D.Venkatakrishnan
(Under Section 65 B of
the Evidence Act, 1872)
List of the Exhibits marked on the side of the Defendants:-
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C.S. 373 of 2020
N.ANAND VENKATESH,. J
rka
C.S.No.373 of 2020
19.11.2021
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