Madras High Court
Hatsun Agro Product Ltd vs M/S.Sri Ganapathy Dairy on 25 February, 2022
O.S.A.(CAD) No.2 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 25.02.2022
CORAM
THE HONOURABLE MRS. JUSTICE PUSHPA SATHYANARAYANA
AND
THE HONOURABLE MRS.JUSTICE S.KANNAMMAL
O.S.A.(CAD) No.2 of 2022
and C.M.P.No.213 of 2022
Hatsun Agro Product Ltd.,
having its Registered office at
No.1/20-A, Rajiv Gandhi Salai (OMR)
Karapakkam, Chennai - 600 097
and also carrying on business at
Ole No.AD-83/New No.AD13
Anna Nagar, Opp.: IOB Towers Branch
Chennai - 600 040
Represented by its Authorised Signatory .. Appellant
Vs.
M/s.Sri Ganapathy Dairy
A Partnership Firm
Represented by its partners
having office at
No.1, Thair Ittery Street
Kannappa Nagar
Coimbatore - 641 027 .. Respondent
***
Prayer : Original Side Appeal filed under Section 13(1)A of the
Commercial Courts Act r/w Order XXXVI Rule 9 of Original Side Rules
against the judgment and decree dated 14.09.2021 in C.S. No.748 of
2018.
***
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For Appellant : Mr.N.Surya Senthil
for M/s.Surana & Surana
For Respondent : Mr.H.Karthik Seshadri
for M/s.Iyer & Thomas
JUDGEMENT
PUSHPA SATHYANARAYANA, J.
The plaintiff, whose suit for infringement of its trademark and
passing off the defendant's products as that of the plaintiff by using the
impugned trademark was dismissed, has preferred the above
Original Side Appeal.
2. The claim of the plaintiff is that its predecessors had adopted the
trademark in the year 1970 for ice creams and the same has
been in continuous use ever since then. It is stated that their trademark
has been registered under Classes 29 and 30 of the Trademarks
Act, 1999. When the plaintiff came to know that the defendant has been
using the identical trademark "ARuN" in respect of Ghee, a legal notice
was issued on 27.03.2018 requesting the defendant to desist from using
plaintiff's trademark.
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3. It has been alleged that the defendant has adopted plaintiff's
trademark with malafide intention for their business. Since the plaintiff
has been using the trademark for more than four decades, the public
would reasonably presume that the defendant's products in the identical
mark also belong to the plaintiff. The infringing mark of the defendant
being identical, would result in confusion and deception among the
general public amounting to infringement of plaintiff's registered
trademark. Since the plaintiff has been dealing with dairy products, it
would be misleading and confusing for any buyer to assume defendant's
product as that of the plaintiff, since the goods are belonging to the same
class and are sold through the same trade channels. Since the plaintiff
has exclusive right over the use of trademark "", the suit has been
filed to restrain the defendant from infringing its trademark.
4. The suit was resisted by the defendant. The case of the
defendant is that their firm was promoted by one N.Arunachalam and it
was named after the deity Arunachaleswarar. The father of the defendant
was in the business of Ghee manufacture in the name of Sri Ganapathy
Stores from 1965. The defendant manufactures and sells top quality
ghee with Agmark Special Grade Certification dated 13.02.1990. Though
originally the defendant did not know about the trademark registration,
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after receipt of the legal notice, they have filed a trademark application
seeking registration of their trademark.
5. It is further stated that the plaintiff does not use the trademark
with ghee despite getting the registration. As the plaintiff's
ghee is called Hatsun ghee. The defendant further contended that the
plaintiff did not use the trademark for the goods ghee, though the
use of " " is only for ice creams. Therefore, there is no chance of any
confusion as alleged in the minds of the buyers, while purchasing
defendant's product, namely Ghee from a retail store, as that of the
plaintiff's products. Besides, the mark and the label with the logo are
distinguishable and it will not cause any confusion in the minds of the
buyers.
6. Admittedly, the ice cream of the plaintiff is sold in exclusive
outlets, whereas the defendant's ghee is being sold in retail market. The
defendant being the prior user of the word ' for ghee is
entitled to continue their trade using the said mark for their product, as
Section 34 of the Trademarks Act, 1999, protects the right of the prior
user. Hence the defendant had sought for dismissal of the suit, as there
is no infringement as alleged by the plaintiff.
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7. On the side of the plaintiff, Assistant General Manager of the
plaintiff was examined as PW1 and 32 documents were filed as Exs.P1 to
P32. On the side of the defendant, one A.Shanmugam, was examined as
DW1 and 26 documents were marked as Exs.D1 to D26.
8. Based on the pleadings and evidence, the trial court had framed
as many as 10 issues and after considering the same elaborately, the
learned single Judge had dismissed the suit. Aggrieved by the said
decision, the plaintiff has preferred the above appeal.
9. Admittedly, the dispute relates to the product ghee sold by the
defendant, who is the respondent herein, by using the name "ARuN". The
trial court has found that the plaintiff's trademark has been validly
registered and the concerned legal user certificates have been produced
before the trial court and the validity of the same is not challenged by
the defendant, therefore, there is no dispute on the said issue and the
plaintiff's trademark registration is valid and subsisting on date.
Admittedly, the defendant had not registered its trademark. Therefore,
whether the defendant is entitled to protection under the Trademarks
Act, 1999, has to be decided.
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10. The learned counsel appearing for the appellant would contend
that the plaintiff has been using their trademark since 1970,
whereas the defendant's alleged first use is only in the year 1989.
Therefore, the claim of the defendant as a prior user of the trademark
"Arun" cannot be sustained. It was argued that the defendant had not
produced any evidence for having used the label, mark since 1989, as
has been pleaded.
11. In response, the learned counsel appearing for the defendant
submitted that the use and registration are two different and distinct
ideas in Trademark Law, as registration without use is not good, while
bona fide use even without registration is good enough. The Trademark
Law itself is an anti-monopoly, anti-trafficking and anti-squatting and it
gives high recognition to a bona fide user, as a prior user and an honest
and concurrent user. The defendant has got the Agmark certification as
"Special Grade". Ex.D.8 is the Agmark Special Grade certification from
13.02.1990. Ex.D.13 - dated 08.03.2000 is the approval obtained from
Agricultural Officer. As the defendant was not aware and did not know
about trademark registration, it was carrying on business without the
same. After the receipt of the legal notice from the plaintiff, it had
applied for Trademark registrations as per Exs.D.22 and 23.
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12. The next aspect for consideration is about the infringement.
The rights of a registered proprietor in an action for infringement under
the Trademarks Act, 1999 allows for protection against identical, similar
and dissimilar goods, based on the facts and circumstances of each case
under Section 29 of the Trademarks Act, 1999. While Section 28 of the
Act talks of the rights conferred by registration including the right to seek
relief of infringement, Section 29 of the Act, defines what is infringement.
In this regard, the learned counsel for the appellant pointed out that the
defendant's trademark application for the mark vide Trademark
Application No.3967455 is still pending, as has been evidenced by
Ex.D22 dated 08.10.2018.
13. Infringement is product (goods) specific. Under Section 28 of
the Trademarks Act, 1999, what is given is the right to the Registered
Proprietor, whereas in Section 29(1) of the Act, if any other person tries
to take away what is given to the Registered Proprietor in the course of
the trade, it would amount to infringement. Both the above sections
relate to goods in respect of which trademark is registered. Hence the
infringement should be goods specific.
14. The grievance of the plaintiff is that Ex.P15 was registered on
09.06.1982, which is a comprehensive mark, logo and Arun Ice creams
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are written in stylish letters. The said registration is in the name of
Hatsun Foods Pvt. Ltd., which company was not in existence in 1982.
Therefore, the question, whether there is or there is no resemblance in
both the plaintiff and the defendant's marks, depends upon the facts of
the case.
15. The plaintiff is entitled to be protected with regard to its
trademark, if defendant's mark or part of it is not likely to deceive or
cause confusion and the defendant's mark is not identical or closer,
similar to the trademark belonging to the plaintiff. In other words,
Section 29(2) of the Act deals with (1) identical marks and similar goods;
(2) similar mark and identical or similar goods and (3) identical mark and
identical goods. So the test is as per Section 29(2) about the likelihood
and confusion. However, Section 29(4) deals with the case on
trademarks, which have reputation in India. Section 29(4) says that if an
identical or similar trademark is used on dis-similar goods i.e. goods not
similar to those mentioned in the registration, it cannot be an
infringement.
16. The facts in this case shows that Ex.P15 is only a registration
prior to 1989, which is only for ice creams in Class 30, which is a
comprehensive mark and not for the name Arun. Ex.P22 is plaintiff's
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certificate for Class 29 for the products milk, milk powder, butter milk,
butter, ghee, cheese, curd etc. This was obtained on 30.01.2006.
17. From the above, it is clear that the plaintiff had not been using
the trademark for ghee even after 2006. The above said
products are being traded under the brand name "Hatsun", which means
that only ice cream is sold in the brand name of "Arun" and also in the
brand name of "IBACO". Therefore, it is evident that the plaintiff does not
use the trade mark "Arun" for ghee, despite getting a registration, as the
plaintiff's ghee is known as Hatsun Ghee. Hence, as suggested in Section
29(4) of the Act, the plaintiff should have achieved the status of a well
known trademark. Even applying Section 29(5) of the Act, unless the
defendant had used the registered trademark as its trade name or part of
its trade name, there is no infringement, as alleged. It would amount to
infringement if the defendant had dealt with ice cream in respect of
which the trademark is registered i.e. in same goods. Therefore, the
goods hold great importance.
18. The learned single Judge had categorically found that, for
question Nos.8 to 11 put to PW1, it has been categorically admitted by
PW1 that ghee, milk, curd and milk powder are sold under the trade
name Hatsun and milk and curd are sold under the trade name Arokya.
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Further it was admitted by PW1 that ghee is not sold in the trade name
"Arun". The claim of the plaintiff that they are the prior user of the mark
"Arun" and they have obtained their trademark registration under the
Trademarks Act for ghee in class 29 in the year 2006 and specifically for
ghee only in the year 2013, are all not established. Being a prior user,
the defendant is protected under Section 34 of the Trademarks Act, 1999
and the plaintiff has lost its right over the mark, in view of Section 47 of
the Trademarks Act, 1999. The learned single Judge also had found that
the trademark of the plaintiff "Arun" has not acquired a secondary
meaning among the general public and it is a generic common word not
associated only with the plaintiff or it is a word coined by the plaintiff.
Merely because the word "Arun" is registered by the plaintiff, it cannot be
allowed to monopolize over the word. The defendant had already
established that the mark "ARuN" is used in good faith for their goods,
much prior to the plaintiff. The defendant also had clearly and
categorically explained why the name "ARuN" was adopted and how they
should be treated as a bona fide user.
19. Admittedly, the plaintiff's first registration for "Arun" for ghee is
only in 2006 in Class 29. Despite obtaining the registration for Ghee, the
plaintiff does not use the mark for ghee. The plaintiff also had miserably
failed to establish the status of "well known trademark", as there is
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no evidence produced on its side to determine such status. Even
presuming that it is a "well-known trademark", the defendant being a
prior user or a bona fide user, cannot be prevented from using the same.
In the absence of any evidence to establish that the defendant had
engaged in deceptive adoption of plaintiff's trademark, the relief sought
for by the plaintiff cannot be granted. The plaintiff also has not
established that there is a possible confusion and whether the
resemblance is such that there is a reasonable probability of confusion or
deception. In the light of the above discussion, we find no infirmity or
error in the judgment of the learned single Judge warranting interference
by this court and the same deserves to be confirmed.
20. In the result, the original side appeal is dismissed. However,
there shall be no order as to costs. Consequently, the connected civil
miscellaneous petition is closed.
(P.S.N., J.) (S.K., J.)
25.02.2022
Index : Yes / No
Internet: Yes
Asr
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PUSHPA SATHYANARAYANA, J.
AND
S.KANNAMMAL, J.
Asr
O.S.A. (CAD) No.2 of 2022
25.02.2022
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