Madras High Court
South India Surgical Company ... vs Golden Sports & Surgical ... on 8 September, 2021
C.S.(Comm.Div.)No.396 of 2020
IN THE HIGHCOURT OF JUDICATURE AT MADRAS
Dated: 08.09.2021
Coram:
THE HONOURABLE DR.JUSTICE G.JAYACHANDRAN
C.S.(Comm.Div.)No.396 of 2020
South India Surgical Company Limited
Rep. By its Director Mr.Vivek Bajaj
117/65, Wallajah Road, Triplicane,
Chennai -600 002, Tamil Nadu ... Plaintiff
/versus/
Golden Sports & Surgical Industries,
Rep by its Propertier Ms.Poonam Verma,
WS 433, Basti Sheikh,
Near Bada Gurudwara
Jalandhar – 144002, Punjab ...Defendant
Prayer: The Civil Suit has been filed under Order VII Rule 1 CPC Read with
Order VII Rule 1 of the Original Side Rules of the Madras High Court, Section
2 (1)( C) (xvii) Read with section 7 of the Commercial Courts Act, 2015 and
Sections 11, 27, 29, 134, & 135 Trade Marks Act, 1999, praying for
(a). A permanent injunction restraining the Defendant, their properties,
partners, directors, subsidiaries, affiliates, franchisees, officers, employees,
personnel, servants, agents, representatives including wholesalers, distributors,
stockists and anyone acting for or on their behalf from in any manner directly
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or indirectly using the trademark 'SISCO' and/or any mark identical or similar
to the Plaintiff's mark 'SISCO', including but not limited to manufacture,
marketing and/or sale of counterfeit products and/or rendering of services
amounting to infringment of Plaintiff's registered Trademarks under Nos.
302533 in Class 10, No. 2607481 in Class 10 and No.2607482 in Class 35.
(b) A permanent injunction restraining the Defendant, their proprietors,
partners, directors, subsidiaries, affiliates, franchisees, officers, employees,
personnel, servants, agents, representatives including wholesalers, distributors,
stockists and anyone acting for or on their behalf from in any manner directly
or indirectly using the trade name and/or trademark 'SISCO' and/or any mark
identical or similar to the Plaintiff's mark 'SISCO', including but not limited to
manufacture, marketing and/or sale of counterfeit products and/or rendering of
services amounting to passing of the Defendant's goods and services as that of
the Plaintiff's;
(c) An order directing the Defendant to furnish all the data and
accounts of any and all transactions undertaken, goods sold, services rendered
and the profits obtained during the course of their business relating to the
rendering of services under the impugned trademarks 'SISCO', and/or any
other mark identical or deceptively similar to the Plaintiff's trademark 'SISCO';
(d) An order directing the defendant to pay preliminary damages for a
sum of Rs. 25,00,000/- (Rupees Twenty Five Lakhs Only) to the plaintiff apart
from such damages as calculated upon accounts being rendered by the
defendants.
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C.S.(Comm.Div.)No.396 of 2020
(e) An order for delivery up of any and all finished and/or unfinished
products, materials including signage, cards, stationery, accessories, labels,
brochures, books, printed materials including hoardings and other material
bearing the impugned trademark or being used in respect of the mark 'SISCO'
and/or any mark identical with or deceptively similar to the Plaintiff's trade
mark 'SISCO', by the Defendant to the plaintiff for the purpose of destruction;
(f) for costs.
For Plaintiff : Mr.M.S. Bharath
For Defendant : No appearance
JUDGMENT
(Case has been heard through Video Conferencing)
The suit is filed for permanent injunction restraining the defendant
from infringing the trademark SISCO and passing off the spurious goods of the
defendant in the name of SISCO, which is duly registered trademark of the
plaintiff, consequential relief of furnishing data and accounts for the
transaction, the preliminary damages of Rs.25,00,000/- and delivery of all the
infringed materials also sought in the suit.
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C.S.(Comm.Div.)No.396 of 2020
2.The specific averment in the plaint is that they are in the trade of
manufacturing surgical instruments in the name and style South Indian
Surgical Company adopting the trademark “SISCO” since 1950. By the quality
of the products, they have gained major market share in the surgical instruments
and good reputation among the medical community. While so, they came across
products in the name of SISCO sold by the defendant through online. Initially,
the plaintiff was under the impression that the defendant is reselling their
products through online. However when they purchased the surgical scissor
from the defendant through www.amazon.in, to shock and surprise they found
spurious goods sold by the defendant as if the product is of the plaintiff. Hence
the present suit is filed for the reliefs mentioned above.
3.This Court, on considering the averments made in the plaint and
the affidavit filed along with the interim injunction application, granted interim
injunction on 22.12.2020 restraining the defendant from marketing the spurious
product carrying the plaintiff's trademark.
4. After service of summons, though the learned counsel for the
defendant entered appearance, he has not chosen to file the written statement.
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C.S.(Comm.Div.)No.396 of 2020
However, the learned counsel appearing for the defendant reported that they
have stopped manufacturing/selling surgical scissors with identical and similar
mark “SISCO”, which is the trademark of the plaintiff. It was only an oral
submission made across the bar, but no written undertaking was filed by the
defendant. Hence, this Court directed the plaintiff to proceed to give evidence.
Accordingly one Mr.J.G.Rajan, the authorised signatory of the plaintiff's
company has mounted the witness box and filed the proof affidavit in lieu of
chief examination and marked 12 exhibits and 6 material objects.
5.The learned counsel for the plaintiff submitted that the plaintiff's
company which is involved in manufacturing high quality surgical instrument
particularly surgical scissors, which is very essential for surgeries, has been
spuriously manufactured by the defendant and selling it through online as if the
goods are produced by the plaintiff. The learned counsel for the plaintiff drew
the attention of this Court to the screen shot of the defendant's product
displayed in the website www.amazon.in and the sample purchase made by the
plaintiff from amazon and the spurious goods sold by the defendant and marked
through amazon.
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C.S.(Comm.Div.)No.396 of 2020
6. The screen shot of the defendant products bearing the plaintiff's
mark SISCO, the surgical scissor and the invoices for purchase of the surgical
scissor sold by the defendant through on line are marked as Ex.P7 and Ex.P.8.
A similar screen shot for other surgical instruments sold by the defendant
carrying the plaintiff's trademark SISCO are also found from the screen shot
which indicates that the defendant are marketing the product through online as
if the products are from the plaintiff's company. Ex.P.7 and Ex.P.8 clearly show
that even a vigilant purchaser will be carried away by the display of the
products description found in the website. Without any compulsion, the
defendant has used the plaintiff's mark SISCO for their product and has been
deceptively passing off the product to the public through online.
7. The proprietary trademark right of the plaintiff over the mark
“SISCO” is proved through Ex.P.3 which is the legal user certificate of the
word mark SISCO since 1950. It has a valid registration since 30.01.1975
bearing certificate No.128592 dated 28.10.1978 for the goods under class 10
[surgical instruments and equipments]. This certificate of registration is valid
upto 30.01.2030. A similar trademark registration is with the plaintiff for the
goods like surgical, medical, dental and veterinary apparatus and instruments,
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C.S.(Comm.Div.)No.396 of 2020
syringes, needles, endotracheal tubes, catheters and suture materials for the
medical purpose under class 10 and same is marked as Ex.P.4. The registration
dated is 05.10.2013 certificate No.1940704. This document would clearly show
that the exclusive right over the mark SISCO of the goods which are used legal
user certificate Ex.P.3 and Ex.P.4.
8. While so, the defendant has no right to adopt or use the name of
SISCO for its product. The material objects M.O.1 and 2 which is the product
of the plaintiff compared with material objects 3 and 4 which are the product of
the defendant, which the plaintiff has purchased through online under Ex.P8
and Ex.P.9 on the face show the inferior quality of the defendant's product. If
the products are sold without adopting the name of the plaintiff while
describing their product, there may not be any cause of action to proceed
against the defendant. Since the defendant has adopted the trademark of the
plaintiff to describe their product, it is the case not only an act of infringement
and passing off, but will also attract penal provisions for selling spurious
products more so. When the products are surgical instruments which need high
quality.
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C.S.(Comm.Div.)No.396 of 2020
9. Therefore, this Court is convinced that the defendant has
committed infringement of the plaintiff's mark and passing off. Therefore, the
injunction relief sought in the prayer (a) and (b) are granted. As far as the relief
sought in the prayer (c) and (d) seeking rendition of accounts and preliminary
damages for a sum of Rs.25,00,000/-, the proof for damages cannot be
ascertained without accounts. In the absence of proof, the relief sought under
prayer (c ) and (d) are declined. The relief in prayer (e) is granted. Same may be
enforced by executing the decree.
10. Accordingly, the suit is allowed for the above relief. Being an
act of rank infringement and passing off, exemplary costs of Rs.1,00,000/-
(Rupees One Lakh only) besides regular costs for the suit is ordered.
08.09.2021
Index :Yes/No
speaking order/non speaking order
rpl
DR.G.JAYACHANDRAN,J.
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C.S.(Comm.Div.)No.396 of 2020
rpl
C.S.(Comm.Div.)No.396 of 2020
08.09.2021
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