Madras High Court
M/S. Kaleesuwari Refinery ... vs Sri Vinayaka Agro Industries on 3 October, 2023
C.S. (COMM. DIV.) No.130 of 2022
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 03.10.2023
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
C.S. (COMM. DIV.) No.130 of 2022
and
A. No.2658 of 2022
M/s. Kaleesuwari Refinery Private Ltd.,
Represented by its Manager (Legal)
A. Saravanan ... Plaintiff
vs.
Sri Vinayaka Agro Industries,
Survey No.44/1, Block 10,
Back to Sisu Hospital,
Kandhampatty,
Tamil Nadu – 636 005. ... Defendant
Prayer : Plaint has been filed under Order IV Rule 1 of the O.S. Rules
r/w Order VII Rule 1 of C.P.C. Rules r/w Sections 134 and 135 of Trade
Marks Act, 1999 praying for the following 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 reputed and well known registered
Trade Mark “DHEEPAM” by using the offending trade Mark “V RICH
DEEPAM OIL” or any mark or word deceptively similar to the
aforesaid Trade Mark of the Plaintiff's for any edible oil marketed by the
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C.S. (COMM. DIV.) No.130 of 2022
Defendant, their men, agents, associates and / or assignees or any person
claiming rights from the Defendant.
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
“DHEEPAM” lamp oil by using the offending words “V RICH
DEEPAM OIL”or any other words or mark and offending packing
Material / Pouch Bottles deceptively similar to the Plaintiff's trade mark
“DHEEPAM” and Trade dress for “DHEEPAM”.
iii) Direct the Defendant their men, agents, assignees, dealers and /
or retailers, distributor to surrender to the Plaintiff all offending “V
RICH DEEPAM OIL” bottle / container / packing materials label,
advertising materials hoarding, letter heads office stationary and all other
goods containing / bearing offending mark / label “V RICH DEEPAM
OIL” with distinct color scheme, get up or any other mark visually or
phonetically similar to the plaintiff's well known trademark
“DHEEPAM” label and bottle/container for destruction by an order of
this Court and
iv) To pay for the costs of the suit
For Plaintiff : Mr.Vijayan Subramanian
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C.S. (COMM. DIV.) No.130 of 2022
JUDGMENT
This suit has been filed for infringement and passing-off in respect
of the registered Trade Mark “DHEEPAM”. The plaintiff is the
proprietor of the aforementioned Trade Mark which is a registered Trade
Mark under the Trade Marks Act, 1999.
2. The plaintiff has filed the suit seeking for the following reliefs :-
a) permanent injunction to restrain the defendant from infringing
the Plaintiff's reputed and well known registered Trade Mark
“DHEEPAM” by using the offending Trade Mark “V RICH DEEPAM
OIL” or any mark or word deceptively similar to the aforesaid Trade
Mark of the Plaintiff's for any edible oil marketed by the Defendant and
b) to restrain the defendants from claiming the rights from passing
of the plaintiff's product “DHEEPAM” lamp oil by using the offending
words “V RICH DEEPAM OIL” or any other words or mark and
offending packing Material / Pouch/Bottles deceptively similar to the
Plaintiff's Trade Mark “DHEEPAM” and Trade dress for
“DHEEPAM”.
3. The learned counsel for the plaintiff is not pressing the 3rd relief
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C.S. (COMM. DIV.) No.130 of 2022
sought for by the plaintiff in the plaint, which is to seek for a direction to
surrender to the plaintiff all offending “V RICH DEEPAM OIL”
bottle/container / packing materials label, advertising materials hoarding,
letter heads office stationary and all other goods containing / bearing
offending mark / label “V RICH DEEPAM OIL” with distinct color
scheme, get up or any other mark visually or phonetically similar to the
plaintiff's well known Trade Mark “DHEEPAM” label and
bottle/container for destruction by an order of this Court.
4. Since the plaintiff has given up the 3rd prayer, this Court is not
dealing with the same in this judgment.
5. The plaintiff has let in oral and documentary evidence before
the learned Master in support of their pleadings in the plaint that the
defendant has infringed their Trade Mark and the defendant has passed
off their goods as if it is theirs. The plaintiff has also disclosed in the
plaint various suits filed by them against various offenders of the
plaintiff's Trade Mark “DHEEPAM”, and its present status which have
been enumerated in paragraph No.18 of the plaint, which is extracted
hereunder :-
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C.S. (COMM. DIV.) No.130 of 2022
S. No. PRODUCT C.S. No's STATUS
1. Maha Dheepam 407/2015 Disposed
2. Dheepa Olee 852/2015 Disposed
3. Swasthik Dheepa Oil 520/2018 Disposed
4. Dhivya Dheepam 187/2019 Disposed
5. Maha Dheepam 308/2019 Disposed
6. Olee Olee Dheepam 309/2019 Disposed
7. Raha Dheepam 655/2019 Disposed
8. Sri Deepam 173/2020 Disposed
9. Deepam 188/2020 Injunction granted
10. Nandhi Dheepam 250/2020 Injunction granted
11. Deepam 123/2021 Disposed
12. Deepam 124/2021 Disposed
13. SRT Deepam 140/2021 Injunction granted
14. Deepam 55/2022 Disposed
15. Deepam 80/2022 Injunction granted
16. Deepam 81/2022 Injunction granted
6. The plaintiff has also pleaded in the plaint the advertisement
expenses incurred by them with regard to their registered Trade Mark
“DHEEPAM” in paragraph No.20 of the plaint and the details are as
follows :-
Year Quantity in Metric Tonnes Value in Crores
2012-13 2,438 27.05
2013-14 3,224 38.31
2014-15 3,564 41.98
2015-16 3,854 45.06
2016-17 3,420 38.27
2017-18 4,033 47.42
2018-19 5,102 60.88
2019-20 4,153 51.81
TOTAL 29,788 350.78
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C.S. (COMM. DIV.) No.130 of 2022
7. The plaintiff has filed the following documents before the
learned Additional Master – IV, which have been marked as Exhibits.
The details of the documents filed by the plaintiff, which have been
marked as Exhibits before the learned Additional Master IV, High
Court, Madras are as follows :-
Ex.P1 is the printout of the Application for Registration of Trade Mark “Dheepam”,
dated 23.04.2012.
Ex.P2 is the printout of the certificate of registration of design No.245127 issued in
favour of the plaintiff dated 07.05.2012.
Ex.P3 is the printout of the certificate of registration of Trade Mark No.2320404
issued in favour of the plaintiff's mark “Dheepam”, dated 11.06.2018.
Ex.P4 is the original board resolution passed by the plaintiff dated 17.03.2021.
Ex.P5 is the printout of the certificate of registration of copyright No.A-139256/2021
issued in favour of the plaintiff dated 29.07.2021.
Ex.P6 is the printout of the legal usage certificate for the mark “Dheepam” registered
as No.2320404, dated 18.04.2022.
Ex.P7 is the office copy of the legal notice sent by the plaintiff to the defendant
along with track and trace dated 08.06.2022.
Ex.P8 is the printout of the comparison table showing “Dheepam” lable and “V Rich
Deepam Oil” label
8. As seen from the documents marked as Exhibits, the plaintiff is
the registered proprietor of the Trade Mark “DHEEPAM” and the
certificate of Registration was issued in their favour on 07.05.2012, as
seen from Ex.P2. The plaintiff had applied for registration of Trademark
“DHEEPAM” on 23.04.2012 and the Registration was obtained on
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C.S. (COMM. DIV.) No.130 of 2022
07.05.2012. Ex.P3 is the certificate of Registration of Trade Mark in
respect of “DHEEPAM” issued in favour of the plaintiff. The same has
been issued on 11.06.2018. The copy right in respect of “DHEEPAM”
has also been registered in favour of the plaintiff as seen from Ex. P5,
dated 29.07.2021. The legal usage certificate for the Trade Mark
“DHEEPAM”, dated 18.04.2022, which has been marked as Ex.P6 has
been issued in the name of the plaintiff. Prior to the filing of the suit,
the plaintiff has also issued a legal notice to the defendant dated
08.06.2022 which has been marked as Ex.P7. Ex.P8 is the print out of
the comparison table showing “DHEEPAM” label and “V RICH
DEEPAM OIL”. As seen from the label of the defendant, it is
deceptively similar to the plaintiff's label “DHEEPAM”.
9. Section 65-B affidavit has also been filed by the plaintiff with
regard to Exs.D1 to D3, D5 to D8.
10. Ex.P8 which contains the offending label of the defendant as
well as the label of the plaintiff, which the defendant has infringed is
reproduced hereunder :-
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C.S. (COMM. DIV.) No.130 of 2022
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C.S. (COMM. DIV.) No.130 of 2022
11. As seen from the offending label of the defendant, it is clear
that the Trade dress of both the labels are similar and identical in many
respects. The plaintiff has also been dealing with the “DHEEPAM”
Lamp oil from the year 2009. The defendant has also not entered
appearance in this suit despite service of suit summons. The suit is of the
year 2022. The maximum period of 120 days available for the defendant
to file the written statement has also got expired. Therefore, the question
of filing of written statement by the defendant at this stage will not arise.
The defendant has already been set exparte by this Court. From the oral
and documentary evidence available on record, it is clear that the
plaintiff has proved the suit claim by establishing its rights as prayed for
in the plaint filed in support of C.S. No.130 of 2022. Therefore, the suit
is decreed as prayed for in respect of prayer Nos.1 and 2 in the plaint
with costs as the plaintiff is not pressing for the relief in so far as prayer
no.3 is concerned. Consequently, connected application is closed.
03.10.2023
Index: Yes/ No
Speaking order / Non speaking order
Neutral citation : Yes / No
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C.S. (COMM. DIV.) No.130 of 2022
APPENDIX
List of Witness Examined on the side of the Plaintiff:
1. P.W.1 – Mr.A. Saravanan
S. No. Exhibits Description of documents
1. P1 Ex.P1 is the printout of the Application for
Registration of Trade Mark “Dheepam”, dated
23.04.2012.
2. P2 Ex.P2 is the printout of the certificate of
registration of design No.245127 issued in favour
of the plaintiff dated 07.05.2012.
3. P3 Ex.P3 is the printout of the certificate of
registration of Trade Mark No.2320404 issued in
favour of the plaintiff's mark “Dheepam”, dated
11.06.2018.
4. P4 Ex.P4 is the original board resolution passed by
the plaintiff dated 17.03.2021.
5. P5 Ex.P5 is the printout of the certificate of
registration of copyright No.A-139256/2021
issued in favour of the plaintiff dated 29.07.2021.
6. P6 Ex.P6 is the printout of the legal usage certificate
for the mark “Dheepam” registered as
No.2320404, dated 18.04.2022.
7. P7 Ex.P7 is the office copy of the legal notice sent by
the plaintiff to the defendant along with track and
trace dated 08.06.2022.
8. P8 Ex.P8 is the printout of the comparison table
showing “Dheepam” lable and “V Rich Deepam
Oil” label
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C.S. (COMM. DIV.) No.130 of 2022
ABDUL QUDDHOSE, J.
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C.S. (COMM. DIV.) No.130 of 2022
and
A. No.2658 of 2022
03.10.2023
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