Madras High Court
Mr.A.D.Padmasingh Isaac vs Aachi Chettinadu Hotel on 3 January, 2022
C.S.(Comm.Div.) 172 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated : 03.01.2022
Coram:
THE HONOURABLE MR.JUSTICE N.ANAND VENKATESH
Civil Suit (Comm Div.) No.172 of 2021
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.,
No.1926, 34th Street, I Block,
Ishwarya Colony, Anna Nagar West,
Chennai 600 040.
Represented by its Director
Mr.Ashwin Pandian
3. M/s.Heavenly Foods P Ltd.,
Plot No.1926, 34th Street,
I Block, Ishwarya Colony,
Anna Nagar West,
Chenni – 600 040
Represented by its Director,
Mrs.Shiny Ashwin .. Plaintiffs
/versus/
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C.S.(Comm.Div.) 172 of 2021
Aachi Chettinadu Hotel,
1/263, Mariamman Koil Street,
Mugalivakkam,
Chennai 600 125 ..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 & 135 of the Trade Marks Act, 1999,
praying to pass a judgment and decree for:-
(a) granting a permanent injunction, restraining the
defendant, by himself, his servants, agents, distributors, or
anyone claiming through him from manufacturing, selling,
advertising and offering for sale or providing services using the
name “AACHI CHETTINADU HOTEL” or any other similar trade
mark name or similar sounding expression in any media and use
the same in name board, invoices, letter heads and visiting cards
or by using any other trade mark/ name which is in any way
visually or deceptively or phonetically similar to the 1st plaintiffs
trade mark/name AACHI/AACHI CHETINAD RESTAURANT/AACHI
KITCHEN and use the same in pouches, packets or use the mark
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C.S.(Comm.Div.) 172 of 2021
in invoices, letters heads and visiting cards or part of their
restaurant, hotel name any other trade literature or menu card
by using any other trade mark which is in any way visually, or
phonetically similar to the plaintiffs registered Trade mark
Nos.838786, 1116254, 1479159, 171571`8 & 2965624 or in any
manner infringing the 1st plaintiffs registered trade marks
referred herein.
(b) granting a permanent injunction, restraining the
defendant, by itself, its agents or servants or anyone claiming
through or under him any business marketing, selling, advertising
using in trade literature, menu cards, invoices, name boards,
website, Internet advertisements the mark/name 'AACHI
CHETTINADU HOTEL' in relation to the Restaurant or with
respect to or any other food preparation or on any other business
the impugned trademark / name which is any manner deceptively
or phonetically confusingly similar to the plaintiffs trade
mark/name AACHI/AACHI CHETTINAD RESTAURANT/ AACHI
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C.S.(Comm.Div.) 172 of 2021
KITCHEN or in any other manner pass off their hotel, business or
goods as and for that of the plaintiffs.
(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 'AACHI
CHETTINADU HOTEL' or other identical trade mark used in the
pouches and packets bearing the work AACHI/AACHI CHETTINAD
RESTAURANT /AACHI KITCHEN.
(d) directing the defendant to render an account of profits
made by them by the use of the impugned trademark 'AACHI
CHETTINADU HOTEL' on the service 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
(f) pass such further or other order, as this Hon'ble Court
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C.S.(Comm.Div.) 172 of 2021
may deem fit and proper in the circumstances of the case and
thus render justice.
For Plaintiffs :Mrs.Gladys Daniel
For Defendant :Set exparte
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JUDGMENT
The present suit has been filed seeking for the relief
of permanent injunction, restraining the defendant, his servants
or anyone claiming through the defendant from manufacturing,
selling, offering, advertising for sale or providing services using
the name ‘AACHI CHETTINADU HOTEL’/ or 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 1st
plaintiff’s registered trade mark/name AACHI / AACHI
CHETTINAD RESTAURANT/ AACHI KITCHEN/ and the
plaintiffs have also prayed for a direction to the defendant, to
surrender all the materials including the advertising materials,
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C.S.(Comm.Div.) 172 of 2021
pouches, packets and hoardings bearing the name ‘AACHI
CHETTINADU HOTEL’ or any other word identical to the
plaintiffs’ names AACHI’/ AACHI CHETTINAD RESTAURANT/
AACHI KITCHEN/ . The plaintiffs have also sought for a
direction to render the account of profits to the defendant.
2. The case of the plaintiffs is with respect to the
infringement of their registered trade mark AACHI and AACHI
CHETTINAD RESTAURANT. The trade mark AACHI was assigned
in favour of the 1st plaintiff by one registered proprietary
concern called the Aachi Masala Foods (P) Limited 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
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C.S.(Comm.Div.) 172 of 2021
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 become widely famous
among the trading community and the public.
3. The plaintiffs further state that the 3rd plaintiff is the
licensee of the 1st plaintiff to exploit the registered trademarks
AACHI KITCHEN/ and AACHI CHETTINAD RESTAURANT
and that the 1st plaintiff obtained the registration of the trade
mark AACHI CHETTINAD RESTAURANT under No.1116254 on
3.7.2002 in respect of food preparations for human consumption
such as coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee
substitutes, flour and preparations made from cereals, bread,
biscuits, cakes, pastry, confectionery and ice. With respect to
the mark AACHI KITCHEN, the plaintiffs state that the 1st
plaintiff obtained the registration under No. 1715718 in respect
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C.S.(Comm.Div.) 172 of 2021
of restaurants, providing of food and drink, temporary
accommodation, canteen, catering, self service restaurants, fast
food restaurants and snack bars. Subsequently, the 1st plaintiff
has also acquired registration for the device mark under
No. 2965624 in class 43 with respect to restaurants providing of
food and drink, temporary accommodation, canteen, catering,
fast food restaurants and snack bars. The plaintiffs also state
that they have now become one of the leading manufacturers of
packaged masala products and that the mark AACHI has become
synonymous with the goods produced by them and none else in
the market.
4. The grievance of the plaintiffs is that in November
2019, they stumbled upon the defendant's hotel under the name
AACHI CHETTINADU HOTEL/ . The plaintiffs state that
they are perturbed by the defendant’s restaurant name which is
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C.S.(Comm.Div.) 172 of 2021
a total copy of the plaintiffs’ registered trade mark. Plaintiff’s
state that the defendants are reaping benefits without sowing
and they’re taking an undue advantage of the plaintiffs’ mark.
Plaintiff’s also claim that the defendant’s service is of inferior
quality and substandard. The plaintiffs further claim that the
defendant’s offending mark is visually and phonetically 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 passing off of the defendant’s service as that
of the plaintiffs.
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 30-
11-2021.
6. The only issue that arises for consideration in the
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C.S.(Comm.Div.) 172 of 2021
present suit is whether the defendant, by using the mark AACHI
CHETTINADU HOTEL/ has infringed the plaintiff’s
trademarks AACHI / AACHI CHETTINAD RESTAURANT / AACHI
KITCHEN/ and whether the same is phonetically and
visually similar to the trade mark of the plaintiffs and as to
whether the plaintiffs are 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 the learned
Additional Master IV to mark the documents and accordingly, Ex.
P-1 to Ex. P-30 were marked.
8. Heard Mrs. Gladys Daniel, learned counsel for the
plaintiff and carefully perused the documents relied upon by the
Plaintiff.
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C.S.(Comm.Div.) 172 of 2021
9. On carefully going through Exhibit P1 (Legal use
certificate of Trade mark No. 838786), it can be seen that the
plaintiffs are the registered trade mark owner of the word mark
AACHI. It can be seen that the word mark has a distinct identity
and has been in usage since 1995. It can also be seen that the
mark AACHI has become a well-known mark for masala and food
products. From going though Exhibit P2 (Legal use certificate of
Trade mark No. 1116254), it is distinct that the 1st plaintiff is the
owner of the trade mark AACHI CHETTINAD RESTAURANT and
from Exhibits P4 and P5 (Legal use certificate of Trade mark
Nos. 1715718 and 2965624 respectively) it is clear that the 1st
plaintiff is the owner of the registered trade mark AACHI
KITCHEN and the label . From perusing Exhibit P3 (Legal
use certificate of Trade mark No. 1479159), it is evident that the
1st plaintiff has also obtained registration for the mark AACHI in
Tamil. A perusal of Exhibits P21, P23 and P24, reveal that the 3rd
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C.S.(Comm.Div.) 172 of 2021
plaintiff is the licensee and has been using the trade mark AACHI
KITCHEN/ since the year 2014. Further, the 1st plaintiff
possesses 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 documents
marked as Exhibits P19 and P20.
10. It is clear from going through the above mentioned
Exhibits that the defendant's hotel AACHI CHETTINADU HOTEL/
is identical to the plaintiffs’ mark AACHI CHETTINAD
RESTAURANT and indeed these two marks are visually and
phonetically similar. The plaintiffs are prior users of the
registered trademarks AACHI / AACHI CHETTINAD RESTAURANT
/ AACHI KITCHEN/ . Hence, the use of the hotel name
AACHI CHETTINADU HOTEL/ by the defendant
amounts to infringement and passing off.
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C.S.(Comm.Div.) 172 of 2021
11. 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
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C.S.(Comm.Div.) 172 of 2021
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 P30 contains the label of the defendant. A
mere look at the trade mark ‘AACHI CHETTINADU HOTEL’/
that is used by the defendant shows that it is a
conscious copy of the plaintiff’s registered trademark. This mark
is phonetically and visually similar to the plaintiff’s trademarks
‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN/’
. The defendant has adopted this trademark only with a
view to exploit the commercial goodwill achieved by the
plaintiffs.
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C.S.(Comm.Div.) 172 of 2021
13. It must be borne in mind that the consumer who
avails the services of these restaurants 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 Plaintiff’s and the Defendant’s
restaurant. This is not a case of deceptive similarity but one of
exact reproduction of the Plaintiff’s registered trademark. The
Defendants are deliberately using the trademark ‘AACHI
CHETTINADU HOTEL’/ to mislead the general public at
large and they are trying to cash in on the goodwill and
reputation enjoyed by the Plaintiffs. A careful look at the
impugned marks blatantly reveal that it is visually and
phonetically identical to the Plaintiff’s registered trade mark. In
view of the same, there is absolutely no doubt in the mind of this
Court that the Plaintiffs are entitled to the reliefs sought for by
them.
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C.S.(Comm.Div.) 172 of 2021
14. In the present case, both the parties are involved in
the restaurant 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 services will be availed by the
same class of consumers. The above discussion leads to the
conclusion that the mark “AACHI CHETTINADU HOTEL’/
used by the defendant has infringed the plaintiff’s
trademarks ‘AACHI / AACHI CHETTINAD RESTAURANT/ AACHI
KITCHEN/ . 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.
15. In fine, there shall be a judgement and decree as
prayed for in favour of the plaintiff in the following terms:
(a) Declaring that the Permanent injunction, restraining
the defendant, by itself, their servants, agents, men, or anyone
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C.S.(Comm.Div.) 172 of 2021
claiming through them from manufacturing, marketing,
distributing, offering and advertising for sale using the name
AACHI CHETTINADU HOTEL/
or 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 1st plaintiff’s registered trademarks
AACHI / AACHI CHETTINAD RESTAURANT/ AACHI KITCHEN/
and registered trademark nos. 838786, 116254, 1479159,
1715718 and 2965624 or in any manner infringing or passing off
the 1st plaintiff’s registered trademarks referred herein.
(b) There shall be a further decree directing the defendant
to surrender all the materials bearing the impugned mark of
the defendant, and
(c) The defendant is directed to pay a cost of a sum of Rs
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C.S.(Comm.Div.) 172 of 2021
25,000 to the plaintiff.
15. The suit is allowed in the above terms.
03.01.2022
Index:Yes/No
Internet : Yes/No
rka
List of Witness examined on the side of the Plaintiffs:-
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List of Witness examined on the side of the Defendant :-
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List of the Exhibits marked on the side of the Plaintiff:-
Sl. Particulars
Nos.
P1. Legal use certificate of Trade Mark No.838786 in Class
30 dated 29.01.1999
P2. Legal use certificate of Trade Mark No.1116254 in
Class 30 dated 03.07.2002
P3. Legal use certificate of Trade mark No.1479159 in
Class 30 dated 17.08.2006
P4. Legal use certificate of Trade mark no.1715718 in
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C.S.(Comm.Div.) 172 of 2021
Sl. Particulars
Nos.
Class 43 dated 30.07.2008
P5. Legal use certificate of Trade mark No.2965624 in
Class 43 dated 18.05.2015
P6. Certificate of incorporation of Aachi masala Foods p
Ltd dated 30.06.2006
P7. Certificate of incorporation of Aachi Spices and Foods
P Ltd., dated 17.03.2010
P8. Memorandum of Association of Aachi Spices and Foods
P ltd dated 06.03.2010
P9. Certificate of Commercial Tax Registration and Central
Sales Tax of Aachi Spices & Foods (P) ltd dated
28.12.2006, 03.01.2007
P10. Certificate of Commercial Tax Registration of Aachi
Masala and Foods (P) Ltd dated 10.07.2006
P11. Dissolution deed between Mrs.Rani pandian and the
Mr.A.D.Padmasingh Isaac dissolving the partnership
firm, naveen products dated 31.03.2007.
P12. Trade mark license user Agreement between
Mr.A.D.Padmasingh Issac trading as Aachi spices and
Foods and Aachi masala Foods p Ltd dated 01.04.2007.
P13. Trade mark license user Agreement between
Mr.A.D.Padmasingh Issac and Aachi Spices and Foods
Pvt ltd dated 21.04.2010.
P14. Trade mark license user Agreement between
Mr.A.D.Padmasingh Issac and Aachi Masala Foods P Ltd
dated 21.04.2010.
P15. Trade mark license user Agreement between
Mr.A.D.Padmasingh Issac and Aachi Masala Foods P Ltd
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C.S.(Comm.Div.) 172 of 2021
Sl. Particulars
Nos.
dated 04.03.2020.
P16. Trade mark License user Agreement between
MR.A.D.Padmasingh Isaac and Aachi Spices and Foods p
ltd dated 04.03.2020.
P17. Certified copy of the plaintiffs Advertisement in RITZ
Magazine dated December 2006
P18. Printouts of the list of products manufactured and
marketed by the plaintiffs bearing the trademark
AACHI (under Section 65B of the Evidence Act, 1872).
P19. Registration certificates of the mark AACHI in various
countries around the world.
P20. Madrid protocol Registration in classes 29, 30, 43 with
respect to the Trademark AACHI (word) & (device)
designating 107 and 117 countries and subsisting as on
date.
P21. Aachi kitchen's name board (under Section 65B of the
Evidence Act, 1872)
P22. Aachi kitchen's menu card
P23. Printout of the Certificate of incorporation of
M/s.Heavenly Foods (P) Ltd., and memorandum and
Articles of Association, dated 01.04.2014
P24. Trade Mark license user agreement between
MR.A.D.Padmasingh Issac, Aachi Spices and Foods and
Heavenly Foods (P) ltd dated 11.08.2014.
P25. Print out of order passed by trade mark Trial and
Appellate Board, United States patent and Trademark
office dated 13.09.2016 (under Section 65B of the
Evidence Act, 1872)
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Sl. Particulars
Nos.
P26. Original board Resolution dated 13.08.2020 and
10.09.2020.
P27. Chartered Accountant certificates dated 02.03.2017
and 20.07.2020
P28. Sample sales invoices for the years 2000-2020
P29. Sample invoices of advertisements for the years 1999-
P30. Printout of the Defendant's name board (under Section
65B of the Evidence Act, 1872)
List of the Exhibits marked on the side of the Defendants:-
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C.S.(Comm.Div.) 172 of 2021
N.ANAND VENKATESH. J.,
rka
Civil Suit (Comm.Div.) No.172 of 2021
03.01.2022
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