K.T.V.Health Food Private ... vs M/S.Sri Amman Agro Foods
2022 Latest Caselaw 1661 Mad

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                             Dated : 02.02.2022

                                                     Coram :

                           THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH

                                             Civil Suit No.136 of 2021
                                                    (Comm.suit)

             K.T.V.Health Food Private Limited
             Repreented by its Director
             Mr.B.Babu
             No.48/310, Thambu Chetty Street
             Chennai-600 001.                                                           ..Plaintiff

                                                       .Vs.

             M/s.Sri Amman Agro Foods
             A Partnership Firm
             Mr.K.Selvakumar
             Mr.S.Arjunan
             Partnership Carrying on business at
             No.79, Palanthandalam Village
             Thirumudivakkum Main Road,
             Chennai 600 044.                                                         ..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 and 135 of
              the Trade Marks Act, 1999 and Sections 54, 55 r/w Section 62 of the Copyright Act,
              1957.



                                                       1 / 15
https://www.mhc.tn.gov.in/judis
                        (a)granting a permanent injunction, restraining the defendant, by themselves,
              their servants, agents, distributors, or anyone claiming through them from
              reproducing by selling, advertising and or offering for sale edible oil both domestic
              and exports by using the impugned Trademark ROHINI and the pouch as shown in
              Document No.2 upon the goods or in any media and use the same in invoices, letter
              heads and visiting cards or by using any other Trademarks which is in any way
              substantially reproduce the Plaintiff's Trademark ROOBINI or in any manner
              infringing the Plaintiff's Trademark under Nos.837894 & 1415277 in class 29 with
              respect to edible oil and vanaspathi.
                        (b)granting a permanent injunction, restraining the Defendant, by themselves,
              their servants, agents, distributors, or anyone claiming through them from
              reproducing by selling, advertising and or offering for sale edible oil both domestic
              and exports by using the impugned Trademark ROHINI (word) and (pouch) as
              shown in Document No.2 upon the goods namely edible oil and vanaspathi or in any
              media and use the same in invoices, letter heads and visiting cards or by using any
              other Trademark which is in any way substantially reproduce the               Plaintiff's
              Trademark ROOBINI (word) and (pouch) shown in Document No.1 or in any
              manner passing off of the Plaintiff's Trademark.
                        (c) granting a permanent injunction, restraining the Defendant, by themselves,
              their servants, agents, distributors, or anyone claiming through them from
              reproducing by selling, advertising and or offering for sale edible oil both domestic
              and exports by using the impugned Copyright ROHINI (pouch) as shown in
              Document No.2 upon the goods namely edible oil and vanaspathi or in any media
              and use the same in invoices, letter heads and visiting cards or by using any other


                                                         2 / 15
https://www.mhc.tn.gov.in/judis
              Copyright which is in any way substantially reproduce the Plaintiff's Copyright
              ROOBINI shown in Document No.1 or in any manner passing off of the Plaintiff's
              Copyright.
                        (d)directing the defendant to surrender           to the Plaintiff all the packing
              material, cartons, advertisement materials and hoardings, letter-heads, visiting
              cards, office stationery and all other materials containing/bearing the Color Scheme
              and Get up in the Plaintiff's trademark ROOBINI or other deceptively similar Trade
              Mark in respect of Oil or any other products
                        (e)for a preliminary decree in favour of the Plaintiff, directing the Defendant
              to render an account of profits made by them by the use of the trademark ROHINI
              and by using the same Color Scheme and Get up in the Plaintiff's trademarks
              ROOBINI on the goods referred and for a final decree in favour of the Plaintiff
              for the amount of the profits found to have been made by the Defendant, after the
              Defendant has rendered accounts.
                        (f) directing the defendant to pay to the plaintiff the costs to the suit, and
                        (g) pass such further order or order, as may be deemed fit and proper in the
              circumstances of the case and thus render justice.




                                     For Plaintiffs       : Mrs.Gladys Ganiel


                                     For Defendant        : Set exparte
                                                            ----

3 / 15 https://www.mhc.tn.gov.in/judis JUDGMENT The present suit has been filed seeking for the relief of permanent injunction,

restraining the defendant, by themselves, their servants, agents, distributors, or

anyone claiming through the defendant from reproducing by selling, offering,

advertising for sale edible oil both domestic and exports by using the impugned

Trademark ROHINI and the pouch upon the goods or in any media,

use the same in invoices, letter heads and visiting cards or by using 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 plaintiff’s registered trade mark ROOBINI andin any

manner infringing or passing off the plaintiff’s registered trademark ROOBINI and

copyright . The Plaintiff has further prayed for a direction to the Defendant

to surrender all the materials bearing the infringing trade mark. The Plaintiff has

also sought for a direction to the Defendant for rendition of accounts.

Case of the Plaintiff:

2.The case of the plaintiff is with respect to the infringement and passing off

of their registered trademark ROOBINI and infringement of copyright for the

4 / 15 https://www.mhc.tn.gov.in/judis artistic work . The plaintiff is a company incorporated under the

Companies Act, 1956 to carry on the business of packaging and selling refined palm

oil. The plaintiff adopted the trademark ROOBINI with respect to edible oils in the

year 1995 and the mark is in continuous use since then. The plaintiff states that the

trademark ROOBINI is registered under Nos. 837894 and 1415277 in Class29 and

has been granted with effect from 22-1-1999. The plaintiff claims that they have

adopted a unique packaging for their product under the trademark ROOBINI and

that their pouch and carton are copyrights belonging to the plaintiff as

they were created during the course of employment by the employees of the plaintiff

and no contract exists to the contrary.

3.The plaintiff states that their oil trading business in Kotwal market dates

back to 1971 and was the first ever retail venture operated in Kotwal market. The

plaintiff further states thatfrom 1999-2008 the business was carried on as a

Partnership Firm and from 2008, the business is carried on by the plaintiff as a

Private Limited Company. The plaintiff states that their turnover from the sale of

edible oils for the year 2018-2019 was more than 2674 crores. The plaintiff claims

that over the years it has grown into one of the leading companies for marketing and

5 / 15 https://www.mhc.tn.gov.in/judis re-packaging of oils in India by its sheer hard work and high quality of products and

the enormous amount of goodwill earned thereto. The plaintiff further claims that it

has taken tireless efforts to promote its products under the trademark ROOBINI and

its unique label and pouch . The plaintiff states that it has spent substantial amount

of money in publicising its trademark and as a result of the same, the members of

the trade and public invariably associate the said trademark with the plaintiff’s

product alone and no one else. Further, the plaintiff claimed that their trademark

ROOBINI has become a synonym of quality, reliability and authenticity in respect

of the aforesaid goods sold by them.

4.The grievance of the plaintiff is that the defendant by way of an application

dated 18-2-2019 has applied for the registration of its trademark ROHINI/

in an identical colour scheme and get up to that of the registered

trademark ROOBINI which belongs to the plaintiff under no. 4090922 in Class 29

through Trademark Journal number 1926. The plaintiff states that it has filed its

opposition to the said registration under No. 1029217 dated 4-2-2020. The plaintiff

claims that the defendant has adopted the word ROHINI in the same manner in

which the plaintiff’s trademark ROOBINI is displayed. The plaintiff further claims

6 / 15 https://www.mhc.tn.gov.in/judis that the colour scheme and get up found in the defendant’s pouch is a

substantial reproduction of the plaintiff’s copyright . The plaintiff states that the

defendant has deliberately and knowingly adopted an identical trademark ROHINI

and has also adopted an almost identical label for their product which clearly

shows that they are aware of the plaintiff’s product and have deliberately chosen to

copy the plaintiff’s trademark and copyright in the artistic work. The plaintiff claims

that the defendant’s trademark is phonetically similar and they have changed the

spelling in the trademark ROOBINI but have retained the entire pronunciation with

minor modifications to the label, to sail as close as possible to the plaintiff’s product

ROOBINI and pass off their product ROHINI as that of the plaintiff’s. The

plaintiff states that the defendant’s acts are malafide and as a result, it drectly

impacts the plaintiff in dilution of the value, goodwill, reputation and proprietary

rights, which exist exclusively in favour of the plaintiff.

Discussions and Findings:

5.The defendant was served and the defendant did not choose to defend

themselves either in person or through counsel and was called absent and was set ex

parte by this court on 28-1-2022.

7 / 15 https://www.mhc.tn.gov.in/judis

6.The only issue that arises for consideration in the present suit is as to

whether the defendant, by using the mark ‘ROHINI/’ has infringed the

plaintiff’s registered trademark ROOBINI and their copyright for the artistic work

in the adoption of their trademark ‘ROOBINI’ and whether the same is

phonetically, visually and structurally identical to the registered trade mark of the

plaintiff and as to whether the plaintiff is entitled for the reliefs sought for in this

suit.

7. This Court on going through the pleadings and the materials relied upon

came to a conclusion that oral evidence is not required in this case and accordingly

directed marking of the documents filed along with the plaint and accordingly,

Ex. P-1 to Ex. P-11 were marked.

8. Heard M/s.Gladys Daniel, learned counsel for the plaintiff and carefully

perused the documents relied upon by the Plaintiff.

9.On carefully going through exhibits P 3 and P4, it can be seen that the

Plaintiff is a registered trademark owner of the mark “ROOBINI”. It is also seen

that;the plaintiff is using these trademarks for marketing and re-packaging of oils

8 / 15 https://www.mhc.tn.gov.in/judis and became registered proprietors of the trademark ROOBINI on 22-1-1999 for

which Trademark Nos. 837894 and 1415277(Exhibit P3 and P4) were assigned.

Further it can also be seen that the plaintiff isthe copyright owner of its

unique packaging carton (Exhibit P2) used in the marketing of its trademark.Further

the petitioners have been using the trademark continuously since 1995.

10. It can be seen that the mark ‘ROOBINI / has become a well-

known mark for edible oils. 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 plaintiff for over more than

25 years by adopting each and every essential feature of the Plaintiff’s trademark,

colour scheme and getup. The defendant is involved in this act inspite of the fact

that the defendant has applied for registration of this trademakr ROHINI and the

plaintiff has already filed the opposition and it is pending before the concerned

authority.

Infringement of Trademark:

9 / 15 https://www.mhc.tn.gov.in/judis

11. A careful scrutiny of the infringed mark of the defendant ‘ROHINI’

shows that the mark is deceptively and phonetically similar to the plaintiff’s

registered trade mark ‘ROOBINI’. The defendant has adopted this trademark only

with a view to exploit the commercial goodwill achieved by the plaintiff.

12. 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 are 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 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.

10 / 15 https://www.mhc.tn.gov.in/judis Infringement of Copyright:

13.A closer look at the mark ROHINI/ shows that the product

carton of the defendant is identical with the copyright of the plaintiff

retaining the following essential features from the plaintiff’s artistic work:

● The orange colour pouch, white border and same font. ● The trademark is written in white bordered in red. ● The same style of writing and colour combination for its mark. ● The description of the oil written below the trademark as REFINED PALMOLEIN in white in the same style and font.

This clearly shows that the defendantis aware of the plaintiff’s product and has

deliberately chosen to copy the plaintiff’s copyright in the artistic work to piggy

bank on the goodwill and reputation earned by the plaintiff.

14.In the present case, both the parties are involved in Oil trading 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 productswill be made available

through the same trade channels and to the same Class of consumers.

11 / 15 https://www.mhc.tn.gov.in/judis

15. The above discussion leads to the conclusion that the mark “ROHINI/”

used by the defendant has infringed the plaintiff’s trade mark

‘ROOBINI’ and copyright . That apart, the same is phonetically, visually

and structurally identical to the trade mark of the plaintiff. Accordingly, the plaintiff

is entitled for the reliefs sought for in this suit, except the relief of rendition of

accounts which stands rejected considering the facts and circumstances of the case.

The point for determination is answered accordingly.

16. In fine, there shall be a judgement and decree for ;

a) Permanent injunction, restraining the defendant, by itself, its partners,

men, servants, agents, distributors, stockiest, representatives or anyone

claiming through or under them from in any manner infringing or passing

off the plaintiff’s registered trademark ‘ROOBINI’ under Nos. 837894 and

1415277 inClass29, other registered trademarks by using a deceptively

similar trademark ROHINI/ or any other trademark deceptively

similar to the plaintiff’s registered trademark.

b) Permanent injunction restraining the defendant in any manner

committing acts of copyright infringement by using, in the course of trade,

labels/artistic works which are a substantial reproduction of Plaintiff’s

12 / 15 https://www.mhc.tn.gov.in/judis copyright and other registered copyrights, in colour scheme, get

up and layout for their ‘ROHINI’/ for any edible oils, etc, in any

other manner whatsoever.

c) There shall be a further direction directing the defendant to surrender all

the materials bearing the impugned mark of the defendant, and

d) The defendant is directed to pay cost of a sum of Rs.25,000/- [Rupees

Twenty Five Thousand] to the plaintiff. The suit is allowed in the aforesaid

terms.

02.02.2022

Internet: Yes Index: Yes/No KP

List of Witness examined on the side of the Plaintiffs:- --

13 / 15 https://www.mhc.tn.gov.in/judis List of Witness examined on the side of the Defendant :- ---

List of the Exhibits marked on the side of the Plaintiff:-

                    S.No.         Exhibits                  Dscription of Documents

                      1.          Ex.P.1     Plaintiff's pouch Roobini - Original
                      2.          Ex.P-2     Defendant's pouch ROHINI - Photo
                      3.          Ex.P-3     07.01.0221- Legal use certificate of Trade Mark

No.837894 in Class 29, dated 22.01.1999-Photostat copy.

4. Ex.P-4 07.01.0221- Legal use certificate of Trade Mark No.1415277 in Class 29, dated 20.01.2006 -Photostat copy.

5. Ex.P-5 2008-2020 – Sample invoices – Photostat copy.

6. Ex.P-6 1999-2018-Sample Advertisement in Newspapers, Magazines and invoice – Photostat Copy.

7. Ex.P-7 25.01.2021 – Chartered Accountant certificate – Original.

                      8.          Ex.P-8     Plaintiff's Website-Print out
                      9.          Ex.P-9     04.11.2019-Defendant Trade mark Application

No.4090922 dt.18.02.2019 in class 29 – Print out.

10. Ex.P-10 04.02.2020-Notice of Opposition under No.1029217 in Application No.4090922 dt.16.12.2019-printout.

11. Ex.P-11 29.01.2021-Affidavit of Mr.D.Venkatakrishnan (Under Section 65 B of the Evidence Act, 1872)- Original.

List of the Exhibits marked on the side of the Defendants:- Nil N.ANAND VENKATESH. J.,

KP

14 / 15 https://www.mhc.tn.gov.in/judis Civil Suit No.136 of 2021

(Comm.Suit)

02.02.2022

15 / 15 https://www.mhc.tn.gov.in/judis