Madras High Court
M/S.Kaleesuwari Refinery Pvt. Ltd vs M/S.Sst Agencies on 11 December, 2023
Author: Abdul Quddhose
Bench: Abdul Quddhose
C.S.No.340 of 2020
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 11.12.2023
CORAM
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S. No.340 of 2020
M/s.Kaleesuwari Refinery Pvt. Ltd.,
Represented by its Manager (Legal),
Mr.A.Saravanan,
No.53, Rajasekaran Street,
(Opp: Kalyani Hospital, Radhakrishnan Salai),
Mylapore, Chennai - 600 004. ... Plaintiff
Vs.
M/s.SST AGENCIES,
Erode, Tamil Nadu. ... Defendant
PRAYER: Plaint filed under Order IV Rule 1 of Original Side Rules read
with Order VII Rule I of C.P.C. read with Sections 134 and 135 of
Trademarks Act, 1999 read with Sections 61 & 62 of the Copyright Act,
1957 to pass judgment and decree:
(i)for a permanent injunction to restrain the Defendant, their men,
agents, associates and/or assignees or any person claiming rights from them
from infringing the Plaintiff's registered Trade Mark "Gold Winner" by using
the offending Trade Mark "GOBI WINNERS" or any mark or word
deceptively similar to the aforesaid Trade Mark of the Plaintiff's for any
edible oil marketed by the Defendant, their men, agents, associates and/or
assignees or any person claiming rights from the Defendant;
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C.S.No.340 of 2020
(ii)for a permanent injunction to restrain the Defendant its men,
agents, associates and/or assignees or any person claiming rights from
therein from passing-off their inferior product, as that of the Plaintiff's "Gold
Winner" edible refined sunflower oil by using the offending words "GOBI
WINNERS" or any other words or mark and offending packing Material and
pouch deceptively similar to the Plaintiff's trade mark "Gold Winner" and
Trade dress for "Gold Winner";
(iii)permanent injunction restraining the Defendant from violating the
Plaintiff's Copyright in the artistic work used in the Plaintiff's packing
material/pouches used for packing refined edible sunflower oil and bearing
its reputed and well known registered Trademarks "Gold Winner" by
substituting the Trademark "Gold Winner" with the offending words "GOBI
WINNERS" bearing same trade dress, color scheme and get up deceptively
similar to that of the Plaintiff's colour scheme and trade dress in the packing
material/pouch bearing trade Mark "Gold Winner";
(iv)for preliminary decree directing the Defendant to render true
account of profits made by the Defendant by using the aforesaid offending
label of "GOBI WINNERS";
(v)directing the Defendant, its men, agents, assignees, dealers and/or
retailers, distributors, to surrender to the plaintiff all offending pouch/
packing material, label, advertising materials, hoarding, letter heads, office
stationary and all other material containing/bearing offending mark/label
"GOBI WINNERS" with distinct color scheme, get up or any other mark
visually or phonetically similar to the Plaintiff's trademark "Gold Winner"
label for destruction by an order of this Court;
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C.S.No.340 of 2020
(vi)for erasure, removal or obliteration from all infringing goods,
materials or articles in the possession or control of the Defendant with the
offending mark/labels and pouches deceptively similar to the Plaintiff's
"Gold Winner" refined sunflower oil;
(vii)to pay for the costs of the suit.
For Plaintiff : Mr.Vijayan Subramanian
For Defendant : exparte
JUDGMENT
The suit has been filed for infringement and passing off.
2.The plaintiff is the registered proprietor of the Trademark "Gold
Winner". They have obtained registration under various classes for the said
Trademark as seen from paragraph 11 of the plaint. The details of the
registered mark of the plaintiff as disclosed in paragraph 11 of the plaint are
as follows:
Sl.Nos. Date Trademark Nos. Description
1 27.08.1993 605323 Gold Winner for "Sunflower Oil"
2 11.01.2002 1073117 Gold Winner for "Refined Groundnut Oil"
3 11.01.2002 1073118 Gold Winner for "Refined Groundnut Oil"
4 01.11.2002 1147963 Gold Winner for "Refined Sunflower Oil"
5 23.06.2003 1208513 Gold Winner for "Vanaspati"
6 23.06.2003 1208514 Gold Winner for "Vanaspati"
7 16.11.2005 1399086 Gold Winner for "Refined Sunflower Oil"
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Mark App # Class Status
Gold Winner 1147963 29 Registered
Gold Winner 1208515 29 Registered
Gold Winner 2320408 29 Registered
Gold Winner 2320409 29 Registered
Gold Winner 2320410 29 Registered
Gold Winner 2934031 29 Registered
Gold Winner 2934030 29 Registered
Gold Winner 2934032 29 Registered
Gold Winner Vita D3+ 3289982 29 Registered
3.The plaintiff has also obtained International Trademark
Registrations for its mark "Gold Winner". The same has also been disclosed
in paragraph 12 of the plaint. The disclosure made by the plaintiff in
paragraph 12 of the plaint is reproduced hereunder:
Country Mark App# Class Status
Singapore Gold Winner Vanaspati T0526845F 29 Registered
Singapore Gold Winner T0503379C 29 Registered
Singapore Gold Winner T0503792F 29 Registered
Singapore Gold Winner T05037961 29 Registered
Malaysia Gold Winner 05021648 29 Registered
Malaysia Gold Winner 05020758 29 Registered
International Gold Winner 1234655 29 Registered
Application under
Madrid Protocol
US Gold Winner 4848593 29 Registered
Australia Gold Winner 1674105 29 Registered
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4.The plaintiff has also claimed in the plaint that their products
has obtained tremendous goodwill and positive market reception. According
to them, their trademark "Gold Winner" is a well known trademark. They
are using the trademark extensively in respect of various types of edible oils
and vanaspati. It is also the case of the plaintiff that "Gold Winner" pouch is
stylish and captivating. According to them, the artistic work in the "Gold
Winner Refined Sunflower Oil" pouch is unique and has also translated into
stupendous success in the market for the plaintiff, which makes it one of the
highest purchased product in the market. According to the plaintiff, they
coined and adopted the term "Gold Winner" in the year 1990 and the same
has been used extensively without any interruption since then. It is also the
case of the plaintiff that articles have been published in various newspapers/
advertisements about the special and unique products of the plaintiff's
trademark "Gold Winner". According to the plaintiff, the trademark and the
trading style "Gold Winner" are being associated exclusively with the
plaintiff's company alone. The plaintiff has also stated that by the long
usage, the trademark "Gold Winner" has acquired a secondary meaning to
denote and connote the produce of the plaintiff. According to the plaintiff,
the trademark "Gold Winner" assures the public a unique high quality in the
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plaintiff's product, namely, Refined Sunflower oil under the name "Gold
Winner". In the plaint, the plaintiff has also disclosed the various awards
that have been given by various associations and statutory authorities. The
plaintiff has also disclosed the turnover and the sales turnover in the plaint,
which run to several crores of rupees. They have also disclosed the
advertisement expenditure incurred by them for the promotion of their
trademark and the products, which also runs to several crores of rupees. The
plaintiff has also disclosed in the plaint the suits filed by them against the
similar infringers and injunction granted by this Court in those suits
protecting the interest of the plaintiff. The plaintiff had also issued cease and
desist notice to the defendant on 03.08.2020 prior to the institution of the
suit, calling upon the defendant not to use the mark "Gobi Winners" and the
colour scheme, which according to the plaintiff is deceptively similar to the
plaintiff's trademark "Gold Winner" and the colour scheme of the plaintiff
has been patently copied. Despite the cease and desist notice, no reply has
been received from the defendant. According to the plaintiff, the defendant is
continuing to use the offending mark "Gobi Winners", which is deceptively
similar to the plaintiff's registered trademark "Gold Winner". The defendant
was served with the suit summons, but the
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defendant has chosen not to defend the suit. Hence, the defendant was set
exparte by this Court.
5.Before the learned Additional Master II, the plaintiff's witness
A.Saravanan was examined as P.W.1. He has also filed a proof affidavit in
respect of the plaint averments. Before the learned Additional Master II
through P.W.1, the following documents were marked as exhibits on behalf
of the plaintiff:
Sl.Nos. Exhibits Description of documents
1 Ex.P1 Trademark Registration Certificate for plaintiff dated 27.08.1993
2 Ex.P2 Trademark Registration Certificate dated 23.04.2012
3 Ex.P3 Renewal Registration Certificate of trademark registration certificate
dated 08.09.2017
4 Ex.P4 Trademark Registration Certificate dated 01.04.2015
5 Ex.P5 Board Resolution Certificate dated 06.07.2018 and 07.08.2023
6 Ex.P6 Legal Usage Certificate dated 18.10.2019
7 Ex.P7 Legal Usage Certificate dated 18.10.2019
8 Ex.P8 Legal Usage Certificate dated 18.10.2019
9 Ex.P9 Legal Notice issued by the plaintiff dated 03.08.2020
10 Ex.P10 Comparison Table
6.As seen from the aforementioned exhibits, the plaintiff has obtained
registrations under various classes under the Trademarks Act for the
trademark "Gold Winner". The trademark registrations obtained by the
plaintiff have been marked as Exs.P1 to P4. The Legal Usage Certificates
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issued under the Trademarks Act in favour of the plaintiff, which have been
marked as Exs.P6 to P8, also confirm that the plaintiff is the exclusive
owner of the trademark "Gold Winner". The infringing mark of the
defendant is "Gobi Winners", which in the considered view of this Court is
phonetically similar to that of the plaintiff's registered trademark "Gold
Winner". The colour scheme of the defendant's pouch "Gobi Winners" is
also deceptively similar to that of the plaintiff's "Gold Winner" pouch. A
comparison showing "Gobi Winners" pouch and "Gold Winner"s pouch of
the plaintiff is reproduced hereunder and the said comparison is also marked
as Ex.P10:
7.As seen from the comparison of the "Gold Winner" and "Gobi
Winners" pouches respectively, it is clear that the colour scheme and get up
of the defendant's pouch, namely, "Gobi Winners" pouch is deceptively
similar to the plaintiff's pouch, namely, "Gold Winner". The name of the
mark of the defendant, namely, "Gobi Winners" is also phonetically similar
to that of the plaintiff's registered trademark "Gold Winner". The cease and
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desist notice sent by the plaintiff is dated 03.08.2023 and the same has been
marked as Ex.P9. The defendant has also not obtained any registration for
its mark "Gobi Winners".
8.All the aforementioned factors will prove that the defendant has
blatantly copied the plaintiff's trademark, colour scheme and get up of the
plaintiff's pouch. As seen from the documents filed along with the plaint,
which have been marked as exhibits before the learned Additional Master II,
it is clear that the plaintiff's trademark "Gold Winner" is reputed and well
known mark. Being reputed and well known mark and on account of the
fact that the name "Gobi Winners" is phonetically similar to that of the
plaintiff's registered trademark "Gold Winner" and on account of the fact
that the colour scheme and get up of the defendant's pouch is deceptively
similar to that of the plaintiff's pouch, the relief sought for in the plaint has
to be granted in favour of the plaintiff.
9.For the foregoing reasons, a judgment and decree is passed in
favour of the plaintiff against the defendant by granting the following reliefs:
a)Permanent injunction is granted to restrain the Defendant, its men,
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agents, associates and/or assignees or any person claiming rights from them
from infringing the Plaintiff's registered Trade Mark "Gold Winner" by using
the offending Trade Mark "GOBI WINNERS" or any mark or word
deceptively similar to the aforesaid Trade Mark of the Plaintiff for any edible
oil marketed by the Defendant, its men, agents, associates and/or assignees
or any person claiming rights from the Defendant;
(b)Permanent injunction is granted to restrain the Defendant its men,
agents, associates and/or assignees or any person claiming rights from
therein from passing-off their inferior product, as that of the Plaintiff's "Gold
Winner" edible refined sunflower oil by using the offending words "GOBI
WINNERS" or any other words or mark and offending packing Material and
pouch deceptively similar to the Plaintiff's trade mark "Gold Winner" and
Trade dress for "Gold Winner";
(c)Permanent injunction is granted to restrain the Defendant from
violating the Plaintiff's Copyright in the artistic work used in the Plaintiff's
packing material/pouches used for packing refined edible sunflower oil and
bearing its reputed and well known registered Trademarks "Gold Winner"
by substituting the Trademark "Gold Winner" with the offending words
"GOBI WINNERS" bearing same trade dress, colour scheme and get up
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deceptively similar to that of the Plaintiff's colour scheme and trade dress in
the packing material/pouch bearing trade Mark "Gold Winner".
10.In view of the blatant copying of the plaintiff's colour scheme and
get up by the defendant, it is clear that the artistic work of the plaintiff over
the pouch has been infringed by the defendant, which will amount to
infringement of copyright by the defendant.
11.Insofar as the reliefs sought for in prayer column iv, v and vi are
concerned, the learned counsel for the plaintiff is not pressing for the same
and therefore, this suit is dismissed as not pressed insofar as prayer column
iv, v and vi are concerned.
12.The defendant is directed to pay the costs of the suit to the
plaintiff.
11.12.2023
Index : Yes/No
Speaking Order : Yes / No
Neutral Citation Case: Yes / No
vga
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List of witness:
A.Saravanan (PW.1)
List of the exhibits marked on the side of the plaintiff:
Sl.Nos. Exhibits Description of documents
1 Ex.P1 Trademark Registration Certificate for plaintiff dated 27.08.1993
2 Ex.P2 Trademark Registration Certificate dated 23.04.2012
3 Ex.P3 Renewal Registration Certificate of trademark registration certificate
dated 08.09.2017
4 Ex.P4 Trademark Registration Certificate dated 01.04.2015
5 Ex.P5 Board Resolution Certificate dated 06.07.2018 and 07.08.2023
6 Ex.P6 Legal Usage Certificate dated 18.10.2019
7 Ex.P7 Legal Usage Certificate dated 18.10.2019
8 Ex.P8 Legal Usage Certificate dated 18.10.2019
9 Ex.P9 Legal Notice issued by the plaintiff dated 03.08.2020
10 Ex.P10 Comparison Table
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vga
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ABDUL QUDDHOSE, J.
vga
11.12.2023
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